McCarthy Tétrault Advance™ Building Capabilities for Growth
6th Annual Technology Law Innovation Summit
Wednesday, April 19, 2017
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 1
Materials Index
6th Annual Technology Law Innovation Summit Wednesday, April 19, 2017
Table of Contents Tab
Agenda 1
Speakers Biographies 2
Technology Law Information Sheet 3 4 Privacy, Cybersecurity and Data Protection Information Sheet
6th Annual Technology Law Innovation Summit Powerpoint Presentations 5
“Tech Break Up are Hard to Do.” Lexpert Magazine, October 2015 6 “Legal Considerations for Data Breach Preparedness, Part 1.” Lexpert Magazine, 7 November/December 2016 8 “Legal Considerations for Data Breach Preparedness, Part 2.” Lexpert Magazine, January 2016. 9 “Legal Considerations for Data Breach Preparedness, Part 3.” Lexpert Magazine, February 2016. 10 “Board/Public Agency Oversight of the New Technologies.” Lexpert Magazine, February 2017 11 “E-Kiosk Contracts.” Lexpert Magazine, March 2017
Relevant Technology Blogs 12
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McCarthy Tétrault Advance™: 6th Annual Technology Law Innovation Summit
Wednesday, April 19, 2017 Morning Session: 8:45 a.m. - 12:15 p.m.
8:00 a.m. Breakfast/Registration
8:45 a.m. Intro/Welcome Charles Morgan
9:00 a.m. - 9:30 a.m. Cybersecurity/Privacy Charles Morgan Miranda Lam
9:30 a.m. - 10:30 a.m. Outsourcing/Procurement Barry Sookman David Crane Guest: Dr. Ron Babin, Ryerson University
10:30 a.m. Coffee Break
10:45 a.m. - 11:30 a.m. Fintech Heidi Gordon Matt Flynn Guest: Sean Burke, COO, FrontFundr
11:30 a.m. - 12:15 p.m. Tech Hot Topics Barry Sookman - Artificial Intelligence – Keith Rose - Telematics – George Takach - Cloud – Ryan Prescott - CASL Update – Dan Glover - Immigration – Naseem Malik
12:15 p.m. - 1:30 p.m. LUNCH
12:45 p.m. - 1:30 p.m. Luncheon Speaker Fazila Seker, Director, MaRS Innovation
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McCarthy Tétrault Advance: 6th Annual Technology Law Innovation Summit
Afternoon Session: 1:30 p.m. - 2:30 p.m.
1:30 p.m. - 2:15 p.m. Tech M&A Annual Update George S. Takach Pavan Jawanda Véronique Wattiez LaRose Guests: Jason Panzer and Tom Selby, Marlin & Associates
2:15 p.m. - 2:30 p.m. Closing Remarks George S. Takach
For news and insights on technology, intellectual property and privacy laws follow us on Twitter at @MT_TechLaw and to follow today’s conversation use #MTLS17
Download Conference Materials To download the 6th Annual Technology Law Innovation Summit materials, visit the link below or scan with your mobile phone or tablet*:
www.mccarthy.ca/pubs/tls17.pdf
*Must have QR Scanner App
2 McCarthy Tétrault Advance: 6th Annual Technology Law Innovation Summit
Charles Morgan Lawyer Profile
TITLE OFFICE LAW SCHOOL
Partner Montréal McGill University, LLB/BCL, 1997 DIRECT LINE BAR ADMISSIONS 514-397-4230 Québec, 1998 E-MAIL [email protected]
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Biography
Charles Morgan is the national leader of McCarthy Tétrault’s Information Technology Law Group and co-leader of the Firm’s national Cybersecurity, Privacy and Data Protection Group. He is also a member of the Financial Technology group (FinTech). McCarthy’s Technology Law Group is ranked in the top tier (“Band 1”) for Canada by Chambers Global: The World’s Leading Lawyers for Business as well as by The Canadian Legal Lexpert Directory. Mr. Morgan’s practice focuses primarily on complex commercial transactions in the context of tech M&A, outsourcing, cloud, financial technologies, licensing, e-commerce, data protection and telecommunications. Moreover, he has extensive international experience, particularly in the telecommunications sector. Mr. Morgan has ranked as a leading Canadian technology lawyer in the current edition of Chambers Canada, and since 2010 in all editions of Chambers Global. He is listed in the last edition of the Canadian Legal Lexpert Directory as a leading lawyer “repeatedly recommended” in the areas of computer & IT law, telecommunications and technology transactions. He is also listed in the current edition of Who’s Who Legal Canada in telecommunication, media and technology. In 2014, he was named Montreal’s Technology Lawyer of the Year in the legal directory Best Lawyers in Canada.
Recent mandates include:
¬ assisting a leading Canadian financial institution negotiate a joint venture related to a digital wallet and mobile payment solution;
¬ assisting over 30 companies with their CASL (anti-spam law) compliance efforts;
¬ assisting a leading digital and print media company negotiate an IT outsourcing agreement;
¬ assisting an aeronautics company negotiate a global IT outsourcing agreement;
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Charles Morgan Lawyer Profile
¬ assisting with the negotiation of transition service agreements in relation to Desjardin’s acquisition of the State Farm Canada insurance business;
¬ assisting a financial institution with the negotiation of a fibre network build and telecommunications services outsourcing agreement;
¬ assisting a multinational handset device manufacturer with consumer protection and privacy law issues related to a major new product and service launch;
¬ assisting a multinational entertainment company with the implementation of a major social media marketing initiative;
¬ assisting a leading North American retailer with managing a major data privacy breach incident.
In his international telecom practice, Mr. Morgan has assisted numerous governments and telecommunications regulatory authorities, whether for law reform, regulatory strategy, (fixed and mobile) licensing, interconnection or universal service projects in a variety of countries, including Algeria, Burkina Faso, Kenya, Mali, Morocco, Mozambique, Pakistan and Saudi Arabia.
Mr. Morgan has co-authored the following books: Cyberlaw: What You Need to Know about Doing Business Online (Stoddart, 1997); Cyberlaw: A Guide for South Africans Doing Business Online (Ampersand, 1999); Communications Law in Canada (Butterworths, 2000); Information Technology Law — E-mail (LexisNexis Canada, 2008) and Halsbury’s Laws of Canada — Communications (LexisNexis Canada, 2014). He is a contributor to the book The Law of Privacy in Canada (Carswell, 2000).
Mr. Morgan frequently speaks at conferences on matters related to his practice areas, including outsourcing, cybersecurity, data protection, telecommunications and copyright law. He is a member of the executive committee of the International Technology Law Association (ITechLaw).
Mr. Morgan obtained his BA from Trinity College, University of Toronto in 1991; his MA in philosophy from Université de Paris IV-Sorbonne in 1992; and his LLB and BCL from McGill University in 1997. He was called to the Québec bar in 1998.
Miranda Lam Lawyer Profile
TITLE OFFICE LAW SCHOOL Partner Vancouver University of British Columbia, LLB, 2002 DIRECT LINE BAR ADMISSIONS 604-643-7185 British Columbia, 2004 E-MAIL [email protected]
Biography Miranda Lam* is a partner in our Litigation Group in Vancouver. Her practice focuses exclusively on complex business disputes, including contractual claims and economic torts, and her areas of specialization include securities litigation, shareholder remedies, corporate governance issues, and internal investigations, as well as internet and e-commerce issues and defamation. She has successfully appeared as counsel in the superior and appeal courts of British Columbia and Ontario and the Supreme Court of Canada, as well as represented clients in various commercial arbitration proceedings and class action proceedings.
Miranda is also a member of McCarthy Tétrault's Consumer & Retail, Financial Services, and Mining Litigation groups, having worked extensively with clients from each of these industries, and also has a particular interest in assisting private and family-owned enterprises resolve disputes and achieve their objectives. A skilled litigator, she is recognized for her strategic thinking and business-oriented problem-solving approach to all disputes.
Miranda’s recent representative experience includes:
SECURITIES AND SHAREHOLDER LITIGATION ¬ successfully defending issuers, directors and officers in relation to class action claims of secondary market liability and common law misrepresentation; ¬ serving as litigation co-counsel to potential acquirers and targets in hostile take-over bids and related shareholder rights plan hearings, including successfully obtaining an order to cease trade a shareholder rights plan and proposed debt offering on behalf of a global copper and zinc producer in the course of a take-over bid before the British Columbia Securities Commission; ¬ defeating an injunction application to halt the delisting of debentures of a widely traded public company in its efforts to go “private”;
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Miranda Lam Lawyer Profile
¬ representing a leading mining company on an application relating to alleged disclosure deficiencies and the application of shareholder dissent rights under a Plan of Arrangement; ¬ representing companies and issuers on a variety of litigation matters, including approval of plans of arrangement and reorganizations; ¬ successfully resolving a shareholders’ dispute on behalf of a minority shareholder in a manufacturing company; and ¬ concluding an internal investigation involving director misconduct and assisting in improving board effectiveness for a major organization.
COMMERCIAL LITIGATION ¬ successfully resolving a claim for breach of confidence and misappropriation of trade secrets between leading pharmaceutical companies and their former employees; ¬ successfully defending a financial institution against claims of conspiracy and intentional interference with contractual relations; ¬ representing a leading consumer products company in protecting the distribution and sale of its products online; ¬ successfully resolving a complex multi-party claim for breach of contract and copyright infringement arising out of the sale of software to a third party; ¬ successfully intervening on behalf of film and music producers on the issue of jurisdiction and the de - indexing of search engine results; ¬ successfully concluding a claim for internet defamation against a financial institution; ¬ defending a consumer electronic products company in various anti-trust class proceedings; and ¬ achieving significant results in the division and allocation of a real estate empire amongst a complicated network of family companies.
Miranda is ranked in the 2017 edition of Benchmark Canada: The Definitive Guide to Canada’s Leading Litigation Firms & Attorneys as a Litigation Star (British Columbia) in the area of general commercial litigation. She is the recipient of the Association of Women in Finance 2014 PEAK Women in Finance “Rising Star” Award, and was recognized as one of Business in Vancouver’s 2013 “Forty Under 40”. In 2015, the National Asian Pacific American Bar Association presented her with its “Best Lawyers Under 40” Award.
Miranda is a contributing author to Defending Class Actions in Canada (now in its 4th ed.), published by LexisNexis, and a previous contributor to the Annotated British Columbia Securities Legislation (now in its 8th ed.), published by CCH Canadian Limited. Recently, she contributed to the firm's Mining in the Courts (Vol. VI) publication, released in March 2016. She is a frequent speaker on shareholder disputes, class action issues and dispute resolution processes, and has also served as faculty for the Continuing Legal Education Society of British Columbia and for The Advocates Society.
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Miranda was called to the British Columbia bar in 2004. She obtained her LLB from the University of British Columbia in 2002, where she received the Honourable Ray Herbert Award as the All-round Graduating Student and the Alumni Association Achievement Award as Outstanding Student of the Year. After graduation, Miranda served as a judicial law clerk for five justices of the BC Supreme Court. In 2007, she received the University of British Columbia’s Faculty of Law’s Outstanding Young Alumnus/Alumna Award, and in 2001, she was named YWCA Young Woman of Distinction.
Miranda currently serves on the board of the Vancouver Foundation, and is Past Chair of the Board of Directors for the University of British Columbia Alumni Association (UBCAA). As Chair of the UBCAA, she chaired numerous committees, including the Chancellor Nomination Committee as well as the UBC Alumni Achievement Awards. She previously served on the boards of the United Way of the Lower Mainland and Imagine Canada, chaired the Board of Directors of Vantage Point and was a member of the Nominations Committee for the YWCA Women of Distinction Awards, including serving as Chair. She is a frequent speaker at various events and conferences on board governance, leadership, community building, and civic engagement, and has lectured extensively on the critical role of the board chair in a not-for-profit context.
* denotes Law Corporation
Barry Sookman Lawyer Profile
TITLE OFFICE LAW SCHOOL
Partner Toronto Osgoode Hall Law School, LLB, 1980 DIRECT LINE BAR ADMISSIONS 416-601-7949 Ontario, 1982 E-MAIL [email protected]
Biography Barry Sookman is a senior partner with McCarthy Tétrault in the Toronto office. He is the former Co-Chair of the firm’s Technology Law Group and was the head of the firm’s Internet and Electronic Commerce Group. Prior to that, he was head of its Intellectual Property Group for six years. He is one of Canada’s foremost authorities in the area of information technology, intellectual property, and privacy/anti-spam law.
Barry Sookman is the author of several books including the leading seven-volume treatise, Sookman: Computer, Internet and E-Commerce Law (Carswell, 1999-2016); Copyright: Cases and Commentary on the Canadian and International Law, co-authored with Steven Mason and Prof. Carys Craig (2nd. Ed. Carswell, 2013), Intellectual Property Law in Canada: Cases and Commentary, co-authored with Steven Mason and Dan Glover (2nd. Ed. Carswell 2013); Computer, Internet and E-Commerce Terms: Judicial, Legislative and Technical Definitions (Carswell, 2001-2015); and Sookman: Computer Law: Acquiring and Protecting Information Technology (Carswell, 1989-1999). He is a contributing author to the following books: Gordon Henderson’s Copyright Law in Canada (Carswell, 1994); Barbara McIsaac’s The Law of Privacy in Canada (Carswell, 2000-2003), which was published by McCarthy Tètrault authors; George Takach’s The Software Business (McGraw Hill 1999); and Marco Giovanoli’s International Monetary Law: Issues for the New Millennium (Oxford 2000).
Mr. Sookman is also the author of numerous articles dealing with information technology and intellectual property. As well, he is an adjunct Professor who teaches intellectual property at Osgoode Hall Law School.
Mr. Sookman is very experienced in providing advice in connection with complex information technology/intellectual property transactions including outsourcing and other strategic procurement relationships, cloud computing, SAAS, military procurement, joint venture transactions, and licensing. He has been involved as lead lawyer in Canada’s biggest and most complicated domestic and international outsourcing and cloud computing deals. He regularly acts on transactions which must meet regulatory
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Barry Sookman Lawyer Profile requirements including the OSFI-B10 Outsourcing Guideline. He also provides advice in connection with protecting and exploiting intellectual property and new media products.
He also has extensive experience assisting clients in conducting business over the Internet including drafting web site terms and conditions and meeting regulatory requirements such as for writings and signatures.
Barry Sookman also has a myriad of experience dealing with privacy and data protection issues including compliance with PIPEDA, and cross-border data flows. He is also one of Canada’s leading lawyers on Canada’s anti-spam law CASL. This includes giving advice in connection with CRTC investigations and in connection with CASL’s private right of action.
Mr. Sookman is very experienced in intellectual property and information technology litigation and arbitration proceedings. He has extensive expertise in copyright matters including in anti-piracy, copyright enforcement, and infringement proceedings including infringements related to computer and entertainment software, software, music, books, audiovisual and other works, technological protection measures, Internet disputes, and rights clearances matters.
In addition to providing strategic advice in connection with high-profile IP litigation, he has been involved as counsel in numerous cases, including the following:
Equustek Solutions Inc v Google Inc (Supreme Court of Canada) file 36602
Canadian Broadcasting Corp. v. SODRAC 2003 Inc., 2015 SCC 57 (Supreme Court of Canada)
Cinar Corporation v. Robinson, [2013] 3 SCR 1168 (Supreme Court of Canada)
Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34 (Supreme Court of Canada)
Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37 (Supreme Court of Canada)
SOCAN v. Canadian Assn. of Internet Providers [2004] SCC 13 (Supreme Court of Canada)
CCH Canadian Ltd. v. Law Society of Upper Canada [2004] SCC 13 (Supreme Court of Canada)
Robertson v. The Thomson Corporation [2006] 25 C.R. 363 (Supreme Court of Canada)
Planification-Organisation-Publications Systèmes (POPS) Ltée v. 9054-8181 Québec Inc., 2014 FCA 185
Equustek Solutions Inc. v. Google Inc., 2015 BCCA 265
Alberta (Education) v. Access Copyright, 2010 FCA 198
Canadian Wireless Telecommunications Association v. SOCAN [2008] FCA 6
Apple Canada Inc. v. Canadian Private Copying Collective 2008 FCA 9
Apple Canada Inc. v. Canadian Private Copying Collective, 2007 FCA 338
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Delrina Corp. v. Triolet Systems Inc. [2002] 17 C.P.R. 289 (Ont. C.A.)
Delrina Corp. v. Triolet Systems Inc., 2002 CanLII 45083 (ON CA)
Nintendo of America Inc. v. Camerica Corp. [1991], 34 C.P.R. (3d) 193 (Fed. T.D.), affirmed [1991] 31 C.P.R. (3d) 352 (Fed. C.A.)
Weitzman v. Hendin (C.A.), 1989 CanLII 4185 (ON CA)
Consumers Glass Co. Ltd. v. Foundation Co. of Canada Ltd., 1985 CanLII 159 (ON CA),
Keatley Surveying v Teranet, 2016 ONSC 1717
Keatley Surveying Ltd. v. Teranet Inc., 2013 ONSC 1361
Robertson v. ProQuest Information and Learning LLC, 2011 ONSC 26
Tariff 22 Proceeding (Making Available Right) (Copyright Board)
Tariff 22 Proceeding (the Internet Copyright Tariff) [1999] 1 C.P.R. (4th) 417 (Copyright Board)
Gemologists International Inc. v. Gem Scan International Inc. [1986], 7 C.P.R. 225 (Ont. H.C.)
394363 Ontario Ltd. v. Fuda, 1983 CanLII 1627
York Condominium Corp. No. 335 v. Cadillac Fairview Corp. Ltd.; Village Masonry Contractors Ltd. et al., Third Parties, 1983 CanLII 1734 (ON SC)
Sega Enterprises Ltd. v. Codemasters Limited (unreported UK proceeding) Chambers Global (2015- 2016)
He has had extensive involvement in government relations activities and has appeared on numerous occasions before Parliamentary committees including in relation to amendments to the Copyright Act, Canada’s anti-spam law (CASL), and the Trans-Pacific Partnership (TPP).
Barry Sookman also has a substantial following in social media. He is a leading Canadian blogger on copyright, Internet, and information technology issues at his blog barrysookman.com which has been recognized in the 2012 and 2013 Clawbies. He also has a large following on Twitter @bsookman and LinkedIn @bsookman.
Mr. Sookman has consistently been ranked by authoritative Canadian and international guides as the top or among Canada’s top information technology, intellectual property, and privacy lawyers. For example:
Chambers Global (2005-2017) Information Technology: Consistently ranked as a “Star Individual” (higher than Band 1). “He wears the IT crown”. “Barry Sookman’s clients consider him to be in a class of his own in Canada – no one else has his depth and breadth of knowledge and technological expertise.” “Peers especially highlight his commercial IT and IP work, particularly in relation to copyright litigation and procurement transactions.” Clients describe him as “lucid in his approach and capable of absolutely brilliant advice.” “Barry Sookman is reputed for his top-rated copyright practice. He leads the firm’s technology law group and is recognized as a leading practitioner in this area.” “He
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is very talented”. He “is a leading light in Canada for IT and comes highly recommended for his knowledge of computer, internet and e-commerce law.” “He has an IQ of 190 zillion; he is remarkable. He is incredibly thorough, is very perceptive and quick.” He “is recognised for his knowledge of both IT and IP law, and is also well regarded for copyright work.” “He is one of only a few lawyers with that type of expertise.” “Barry Sookman is a name that stands out in Canada for IT. He is widely acclaimed for his knowledge of computer, internet and e-commerce law. One interviewee enthused: “He is terrific, awesome – a great speaker and educator.”” “Sources describe Barry Sookman as “the pre-eminent lawyer in the sector,” and say: “He puts law in the context of business and keeps on top of the legislation.” He is a renowned authority on IT, internet and copyright matters.” “Barry Sookman is outlined as being “in a class of his own.” One of the pioneers of Canadian IT law, he offers unparalleled depth in outsourcing work and litigious matters, and utilises his IP expertise to assist clients with a range of multidisciplinary work.” “Star individual Barry Sookman is widely respected as "one of the leading lawyers in Canada" for technology law, offering unparalleled multidisciplinary proficiency in IP concerns. He wins the widespread respect of his peers for his extensive expertise in outsourcing and for his prowess as a litigator: "He is a total force in this area - he is outstanding." One client enthused: "He is the best in Canada and has to be one of the best lawyers internationally I have ever dealt with."”
Chambers Global (2015-2017) Intellectual Property (ranked highest in Band 1): “Barry Sookman is universally regarded as one of Canada’s foremost authorities on information technology and intellectual property issues. One client enthused: “He is excellent – he has the knowledge, the passion and the experience of how to navigate a matter to a successful conclusion.” “Barry Sookman is a renowned copyright expert, who recently acted for Music Canada as an intervener in an infringement case before the Supreme Court of Canada. Sources refer to him as “top-notch,” and say he “has his finger on the pulse of new market developments.”” “Barry Sookman is a recognised leader in the area of copyright, where he holds a wealth of experience.” “Barry Sookman is a recognised leader in the area of copyright, where he holds a wealth of experience. His work highlights include representing Teranet in copyright class action litigation against map surveyors in Ontario.” “Barry Sookman has a "great reputation" in the market as a talented lawyer who "wrote the book on IP and technology law." He is particularly applauded for his work in copyright infringement matters.”
Chambers Global (2015-2017) Canada, Privacy & Data Protection (ranked in Spotlight Table and Band 2) “Barry Sookman of McCarthy Tétrault LLP is a major player in the e-commerce and IT space, and is widely viewed as a “thought leader” on CASL issues. One client enthused: “He provides wise counsel and has a great sense of the broader picture. He gives us great confidence in dealing with the regulators.” “Barry Sookman of McCarthy Tétrault LLP is a major player in the e-commerce and IT space, and is widely viewed as a “thought leader” on CASL issues. One client enthused: “He provides wise counsel and has a great sense of the broader picture. He gives us great confidence in dealing with the regulators.”” “Barry Sookman of McCarthy Tétrault LLP is a prolific technology lawyer who is "at the forefront of sophisticated thought about CASL."
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Canadian Legal Lexpert Directory (2003-2016): Listed in Computer and IT Law (Highest ranking -Most Frequently Recommended Lawyer), Technology Transactions (Highest ranking -Most Frequently Recommended), and Intellectual Property Law (Consistently Recommended) categories.
The Legal 500 Canada (2016) Listed in Technology, Media, Telecoms (Leading Lawyers) “Toronto- based Barry Sookman is widely regarded as a market leader and advised the International Federation of Film Producers Associations and the International Federation of the Phonographic Industry, as interveners, in a landmark case ordering a search engine to delist websites from search indexes globally.”
Best Lawyers (2008-2017) Ranked as the best Technology Lawyer of the Year, 2010, 2011, 2015 and 2017.
Who’s Who Legal: Canada (2011-2015) Canada: Technology Media & Telecommunications: “Most Highly Regarded” Individual. “Peers describe him as a “seasoned lawyer” who is in a “class of his own”. “He is “the doyen on internet work” and is a “legend”. “Barry Sookman is described by peers a ‘world class’ and ‘an inspiration for other lawyers operating in this space’.” “Barry Sookman is in “a class of his own” according to our sources. Based in Toronto, his practice encompasses information technology and intellectual property matters including outsourcing, joint ventures, and licensing”. “Barry Sookman is a “major player” in the field and one of Canada’s “pre-eminent” practitioners advising upon information technology, internet, copyright and privacy law matters. He is described as practising at the forefront of the discipline and “has a close eye on industry developments.””
Euromoney Legal Media Group’s Managing IP (2013) award for Canada’s Outstanding IP Practitioner.
Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada published by Lexpert and American Lawyer (2003-2015): Top-ranked lawyer in Computer & IT Law and Technology Transactions.
IAM: The World’s Leading patent and Technology Licensing Lawyers (2011-2015): “Barry Sookman garners plaudits for his commercial awareness and ‘enterprising approach’ to licence agreements”; among “’the absolute elite of licensing experts’. He maintains a thriving practice encompassing IP and IT transactions for an international clientele.” “Barry Sookman has a wealth of experience in tech. he excels in transactions.” Barry Sookman “brings experience and quality to the table and is a pleasure to learn from.”
Guide to the World’s Leading Technology, Media & Telecommunications Lawyers (2008): Ranked as the number one lawyer in Canada and among the world’s top three lawyers in the technology, media and telecommunication category. Lexpert Magazine (2006): Top-ranked lawyer on list of “Canada’s 100 Most Creative Lawyers.”
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Who’s Who Legal: The International of Who’s Who of Business Lawyers (2008-2013): Described as the “highly capable Co-Chair of the Technology Group and former head of the Internet & e- Commerce Group.”
Guide to the Leading US/Cross-border Corporate Lawyers in Canada (2010) published by Lexpert. Leading Lawyer in Technology Transactions.
Legal Media Group Best of the Best, Guide to the World’s Leading Lawyers (2009): Listed as one of the top Information technology experts in the world.
Legal Media Group Best of the Best, Guide to the World’s Leading Lawyers (2005): Ranked as the top lawyer in Canada and listed among the Top 10 lawyers in the world in the fields of technology, media and telecommunications.
PLC Which Lawyer? (2008): Ranked as a “Highly Recommended Individual” in the outsourcing category and as one of two leading individuals in the telecom and IT category. Mr. Sookman’s books have been cited, referred to or quoted from approvingly in numerous cases such as:
Andrews v. McHale, 2016 FC 624 Biocad Medical Inc.. c. Panthera Dental inc., 2016 QCCS 3096 Seggie c. Roofdog Games Inc., 2015 QCCS 6462 R. v. Avanes et al., 2015 ONCJ 606 (CanLII) (electronic evidence) R. v. C.M., 2012 ABPC 139 (electronic evidence) Century 21 Canada Limited Partnership v. Rogers Communications Inc., 2011 BCSC 1196 (electronic contracting) Toronto-Dominion Bank v e-Funds Limited, 2008 CanLII 88205 (CA TMOB) (evidence) Conexsys Systems Inc. c. Aime Star Marketing Inc., 2003 CanLII 33339 (QC CS) Delrina Corp. v. Triolet Systems Inc., 2002 CanLII 11389 (ON CA) Mensys Business Solution Centre Ltd. c. Drummond RCM, 2002 CanLII 41481 (QC CS) (remedies) Angoss International Ltd. v. The Queen, 1999 CanLII 250 (TCC) (tax) Corporation de l'École des hautes études commerciales de Montréal c. 3178277 Canada inc., 1998 CanLII 12140 (QC CS) Northwest Marine Technology, Inc. v. Crosby, 1996 CanLII 1474 (BC SC) Prism Hospital Software Inc. v. Hospital Medical Records Institute, 1994 CanLII 1308 (BC SC) (remedies) Delrina Corp. v. Triolet Systems Inc., (1993), 47 C.P.R. (3d) 1, 9 B.L.R. (2d) 140 (Ont. Gen. Div.) North American Systemshops Ltd. v. King, 1989 CanLII 3181 (AB QB) (electronic contracting)
Mr. Sookman’s expertise in intellectual property, technology and related subject matter was recognized by Justice Morden of the Ontario Court of Appeal in Delrina Corp. v. Triolet Systems Inc., 2002 CanLII 45083 (ON CA) where he awarded costs to his client at a higher scale given Mr Sookman’s “special expertise stating “It is demonstrated to our satisfaction that Mr. Sookman possesses the special expertise referred
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Barry Sookman Lawyer Profile to in the tariff, an expertise which is relevant to this case. His practice area lies in intellectual property, technology law, and related subjects, and he is the author of three substantial texts in this field. We have no doubt that this experience was particularly relevant to the preparation and presentation of this appeal.”
Mr. Sookman has appeared on the cover of Lexpert magazine three times:
June 2006 “Patent Trolls and Jury Trials, RIM’s Cautionary Tale” October 2003 “Getting IT: First-Mover Advantage in Information Technology” September 2000 “The Rise of the e-Commerce Lawyer”
Mr. Sookman has also appeared on the cover of CBA National magazine’s September 2013 “Is your law firm exposed to cyber-espionage?”
Mr. Sookman is a member of the Copyright Committee of the Patent Trademark Institute of Canada (PTIC). Mr. Sookman is a past chairman of the Canadian Bar Association ― Computer and Computer- Related Technology section. He is a member of the Association Litteraire et Artistique Internationale, the Computer Law Association and ITAC’s Legal Affairs Committee. Mr. Sookman is a former director of the Canadian IT Law Association. He is also a member and former member of the executive of the Toronto Computer Lawyers’ Group, and a member of the Licensing Executive Society and the Copyright Society of the USA. He is also a member of Osgoode Hall Law School’s IP Osgoode Advisory Board and the advisory board of the Canadian Chamber of Commerce’s Canadian Intellectual Property Council (CIPC). He is also a member of the advisory board of the global think tank CIGI. He is a graduate of Osgoode Hall Law School (1980) and was called to the Ontario bar in 1982.
Mr. Sookman holds a BA from Concordia University (Interdisciplinary Studies in Science and Human Affairs) and a Master’s in Environmental Studies (MES) degree from York University (1980).
* Profile photo, Copyright 2012, The Law Society of Upper Canada. reproduced with permission of The Law Society of Upper Canada.
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Schedule to Barry Sookman’s CV Legal Writings and Lectures Books and Articles:
Sookman: Computer, Internet and E-Commerce Law (seven volume treatise) (Carswell 1999-2016)
Sookman: Computer Law: Acquiring and Protecting Information Technology (three volume treatise)(Carswell 1989-1999)
Sookman: Computer, Internet and E-Commerce Terms: Judicial, Legislative and Technical Definitions (Carswell 2001-2016)
Copyright Cases and Commentary on the Canadian and International Law (2nd. Ed. Carswell, 2013) (co- authored with Steven Mason and Prof. Carys Craig)
Intellectual Property: Cases and Commentary on the Canadian Law (2nd. Ed. Carswell, 2013) (co-authored with Steven Mason and Dan Glover)
Barry Sookman, : The Google Book Project: Is it Fair Use? 61 J. Copyright Soc'y 485, Spring, 2014.
“COPYRIGHT CORNER: UNDERSTANDING FLAVA WORKS V. MYVIDSTER: DOES INLINE LINKING INFRINGE COPYRIGHT?” 59 J. Copyright Soc'y 723 (2012)
Copyright Reform for Canada: What Should We Do?, Woodrow Wilson International Center for Scholars, Issue 11, September, 2009
Barry Sookman, Copyright Reform for Canada: Consultation Submission (2009) 2 Osgoode Hall Rev. L. Pol’y 73; also published at 22 IPJ 1.
Why Canada Should Not Adopt Fair use: A joint Submission to the Copyright Consultations, (with Dan Glover) (2009) 2 Osgoode Hall Rev. L. Pol’y 55, also published at 22 IPJ 29
Case Comment: Society of Composers, Authors and Music Publishers of Canada v. Canadian Association of Internet Service Providers Canadian Journal of Law and Technology Vol 3 p149.
Case comment on the CCH v. Law Society Case (in the Computer Technology Law Reporter)
Barry Sookman “The SAC Proposal for the Monetization of the File Sharing of Music in Canada: Does it Comply with Canada’s International Treaty Obligations Related to Copyright? 21-2 I.P.J. 159 – 189; also (2008) 1 Osgoode Hall Rev. L. Pol’y. 101
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Barry Sookman “Facebook Fair for Copyright of Canada: Replies to Prof. Geist (2008) 1 Osgoode Hall Rev. L. Pol’y. 198
Barry Sookman “The Challenges to Privacy Posed by Technology” in Barbara McIsaac’s The Law of Privacy in Canada (Carswell, 2000 – 2001)
Barry Sookman and Bradley Crawford “Electronic Money: A North American Perspective” in International Monetary Law: Issues for the New Millennium (Oxford University, 2000)
Barry Sookman “Legal Framework for E-Commerce Transactions” [2000] C.T.L.R. 85
Barry Sookman “Protection of Databases” in Copyright in Cyberspace (Otto Cramwinckel, 1997)
Barry Sookman “Copyright and Technology” in Henderson’s Copyright Law of Canada (Carswell, 1994)
Barry Sookman “Protecting Intellectual Property Rights in Computer Products and Related Technology” in George S. Takach’s The Software Business in Canada (McGraw-Hill Ryerson Limited 1997)
Barry Sookman “Knowledge-Based Businesses: The Business of the Future” in Business Law & Litigation: Trend Spotting for the 21st Century (for the 1999 Isaac Pitblado Lectures)
Barry Sookman “E-Commerce, Internet and the Law: A Survey of the Legal Issues” Vol. 48, UNB L.J. 119 (1999)
Barry Sookman “Copyright and the Information Super Highway: Some Issues to Think About” 11 I.P.J. 123 (1997) (Part 1) and 11 I.P.J. 265 (1997) (Part 2)
Barry Sookman et al “International Trade in Computer-Related Technology: The Impact of GATT and NAFTA” in Computer Law & Practice, Vol. 10, No. 3, (1994)
Barry Sookman “Developments in Information Technology Law” [1997] 5 C.T.L.R. 209
Barry Sookman “The North American Free Trade Agreement and Computers: A Summary,” Vol. 1, No. 5 Focus Americas (August, 1995)
Barry Sookman “International Differences and Copyright Protection for Software,” [1995] 5 C.T.L.R. 137
Barry Sookman “Canadian Computer Litigation: Where Are We and Where Are We Going?” Vol. 10, No. 11, Software Protection (April 1992)
Barry Sookman “Computer-Assisted Creation of Works Protected by Copyright” 5 I.P.J. 165 (1990)
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Barry Sookman “Création Assistée par Ordinateur d’Oeuvres Protégeés par Le Droit D’auter, Vol. 2, No. 2, Les Cahiers du Propriété Intellectuelle (Jan. 1990)
Barry Sookman “Liability of Geographic Information System Providers” International Computer Law Advisor, (February 1990)
Barry Sookman “ALAI National Report on Computer-Assisted and Computer-Generated Works” in L’informitique et Le Droit D’auteur, (Les Editions Yvon Blais Inc., 1989)
Media Articles and Op-Eds
Fix the value gap – a reply to Michael Geist, Hill Times, January 9, 2017
Intellectual property and the TPP, Bloomberg TV interview, February 5, 2016
Why Canada has nothing to fear over TPP and Intellectual Property Financal Post January 6, 2016
Patents aren’t defensive tools – they’re critical strategic weapons, Globe and Mail May 20, 2015 (with Judith Mackay)
Canada's anti-spam legislation worries small business owners, The Current, CBC Radio
Delete this anti-spam law Financial Post February 28, 2013
More Fickle than Fair: Why Canada Should Not Adopt A Fair Use Regime (with Dan Glover) The Lawyers Weekly,
What Happens When Copyright Goes Digital, August 6, 2009 (with Stephen Stohn), National Post
April 18, 2000 Television Interview with CBC – Copyright and the Internet
Blog Posts and Daily Digest
Barry Sookman publishes a leading blog on Computer, Internet and Intellectual Property Law @ barrysookman.com. The blog includes a daily and weekly digest of developments in computer, internet, and electronic commerce and IP law. Readers subscribe by e-mail, RSS feeds, and read the digest by following him on twitter (bsookman) or on LinkedIn. The following are some of his blog posts:
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2017 February 1- PIPEDA’s global extra-territorial jurisdiction: A.T. v. Globe24h.com
2017 January 9 – Fix the Value Gap – a Reply to Michael Geist
2017 January 2- Browsewraps, fair dealing and Blacklock’s Reporter v Canada: a critical commentary
2016 December 8 – Limitations of Liability in IT Contracts: Atos v Sapient
2016 December 6 – Google v Equustek at the Supreme Court
2016 December 1 – Senate Report on Copyright Board: a Rationale for Urgent Review
2016 November 18 – PIPEDA Privacy law Given Business Friendly Interpretation by Supreme Court: RBC v Trang
2016 November 6 – Copyright Board Studied by Senate Banking Committee
2016 August 29 – CASL’s Private Right of Action
2016 July 15 – Microsoft Wins Big in Warrant Fight to Protect Privacy of User Data
2016 July 12 – Blocking Orders Against ISPs to Combat Trade-Mark Infringement Legal Says Court of Appeal in Cartier
2016 June 29 – Why Crackdown on Pirate Set-Top Boxes is Good for Innovation: a Reply to Michael Geist
2016 June 14 – The Year in Review: Developments in Computer, Internet and E-Commerce Law (2015-2016)
2016 May 29 – Reimagining the Copyright Board – My ALAI Presentation
2016 May 24 – Privacy Injunctions in the Age of the Internet and Social Media: PJS v News Group Newspapers
2016 May 5 – My Appearance Before the Trade Committee on the TPP
2016 April 27 – New Zealand Term Extension Estimate Clearly Inaccurate Says Study
2016 April 21 – My Senate Committee Appearance on the TPP
2016 April 20 – Clarifying What the TPP IP Provisions Mean in Canada for the Innovative Life Sciences Sector
2016 April 17 – Grasping at Straws: The Trouble With “The Trouble with the TPP”, a Further Reply to Michael Geist
2016 March 22 – John Kasich Trumped by CASL, Canada’s Anti-SPAM Law?
2016 March 3 – CD Howe Rejects IP Criticisms of TPP and CETA
2016 February 7 – Does the TPP Protect Canadian Cultural Policy?
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2016 February 5 – Intellectual Property and the TPP: My Bloomberg TV Interview
2016 January 26 – Copyright and Technology: My ALAI Canada Talk
2016 January 22 – CBC v SODRAC: My Talk on Technological Neutrality and Copyright
2016 January 10 – Use of Metatags on Website May Infringe Trade-Mark: Red Label v 411 Travel Bugs
2016 January 7 – Why Canada Has Nothing to Fear Over TPP and Intellectual Property – My Op-ed in the FP
2015 December 31 – TPP and Trade Secrets: A wonderful Idea
2015 December 17 – Why the TPP is a Good Deal for Canadian Innovators
2015 December 15 – TPP, Copyright, E-Commerce and Digital Policy: A Reply to Michael Geist
2015 December 10 – CASL: The Looming Disaster
2015 December 9 – CASL is a Bad Law
2015 November 27 – Technological Neutrality, Technological Neutrality, Technological Neutrality: CBC v SODRAQ
2015 November 21 – CASL Gets Rogers Media
2015 November 5 – Google Liable for Defamation Through Search and Autocomplete Features: Duffy v Google
2015 October 20 – By-Passing Paywall and Circumventing TPM Sinks Fair Dealing Defense: Blacklock’s Reporter v CVA
2015 October 15 – Long Arm of EU Privacy Law: CJEU Judgment in Weltimmo v Hatóság
2015 October 12 – Schrems, What the CJEU Decided and Why it is a Problem for Canadian and Other Non- EU Businesses (Updated)
2015 October 6 – Schrems Brings Down EU-US Safe Harbour
2015 September 2 – Robert Thomson’s Keynote Address on the Distributionists
2015 August 25 – Keyword Advertising Not Passing Off: Vancouver Community College v Vancouver Career College
2015 June 18 – Digital Privacy Act (Bill S-4) Now Law
2015 June 10 – The Year in Review: Developments in Computer, Internet and E-Commerce Law (2014-2015)
2015 May 25 – Privacy by Design Certification Framework Launched by Ryerson and Deloitte
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2015 May 7 – Budget Bill With Copyright Amendments Tabled in House of Commons
2015 April 30 – Economic Effects of Term Extension for Sound Recordings
2015 April 23 – Term Extension and Respect for Artists: A Reply to Michael Geist
2015 April 21 – Canada to Extend Copyright Term for Artists and Record Producers
2015 April 21 – Canada to Accede to Marrakesh Treaty and Extend Copyright Term in Sound Recordings
2015 March 30 – Safari Workaround Claimants to Get Their Day in UK Court Against Google: Google Inc v Vidal-Hall
2015 March 1 – Message Board Operators Liable for Defamatory Posts says Court: Baglow v. Smith
2015 February 19 – C.D. Howe: Copyright Board Undercompensating Artists and Depriving Rights Holders of Royalties
2015 February 16 – Cyber Threats, Information Sharing and The Digital Privacy Act
2015 February 8 – Jurisdiction Simpliciter in Copyright Cases: Geophysical Service v Arcis Seismic Solutions
2015 February 2 – Internet Justice: Mosley v Google
2015 January 25 – LSUC: The Year in Review in Copyright (2014)
2015 January 24 – User’s Guide to Canadian Copyright Tariffs
2015 January 14 – CASL: The Unofficial FAQ, Regulatory Impact Statement, and Compliance Guidelines
2015 January 2 – Copyright Law 2014: The Year in Review
2014 December 11 – Cell Phone Searches Legal Says SCOC: R v Fearon
2014 December 8 – The Pirate Bay Blocked in France
2014 December 1 – The “Right to be Forgotten” Guideline From the Article 29 Working Party
2014 November 25 – Proving Copyright Infringement: John Kaldor Fabricmaker v Lee Ann Fashions
2014 November 24 – CASL: Getting Consents for Upgrades to Computer Programs on Pre-Installed and Resold Devices
2014 November 18 – CASL: When is a Computer Program Installed or Caused to be Installed According to the CRTC
2014 November 17 – CASL Spamaflop Not Constitutional
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2014 November 16 – Good Faith and Honesty Contractual Obligations Says Supreme Court: Bhasinv Hrynew
2014 November 12 – CASL Computer Program Guidance From the CRTC
2014 November 10 – Digital Privacy Act: Important Work Still to be Done by the INDU Committee
2014 October 9 – Canadian IT Law Association – 18th Annual Conference
2014 September 18 – CASL’s Inscrutable Computer Program Provisions to be Tackled by CRTC
2014 September 4 – Technological Neutrality and Copyright: Supreme Court Grants Leave to Clarify Scope in CBC v SODRAC
2014 August 25 – Online Vendors Owe Purchasers a Duty of Care Says an Ontario Court: Hazjizadeh v Canada
2014 August 13 – Michael Geist’s Attack on Artists Over Tariff 8
2014 July 23 – Google Ordered by BC Court to Block Websites: Equustek Solutions Inc. v Jack (Updated)
2014 July 21 – YouTube, Facebook, Netflix liable to Pay for Music in Canada Rules Copyright Board
2014 July 14 – Michael Geist’s Defense of Canada’s Indefensible Anti-SPAM Law CASL
2014 July 8 – CASL: Myths About Canada’s Anti-SPAM Law
2014 July 7 – Canada’s Anti-SPAM Law Perspectives
2014 July 5 – CASL Enforcement Against Charities Clarified by CRTC
2014 July 4 – CASL Spamaflop
2014 June 26 – Aereo: SCOTUS Rules Its Service Infringing
2014 June 21 – CASL’s Effect on Small Business
2014 June 17 – Notice and Notice Regime Under C-11 Coming Into Force
2014 June 13 – Internet Users’ Privacy and Anonymity protected by Supreme Court: R v Spencer
2014 June 8 – CASL Clarified by CRTC at Information Sessions
2014 June 5 – Developments in Computer, Internet and E-commerce Law (2013-2014)
2014 June 2 – Canada’s Most Influential Lawyers?
2014 May 29 – Reimagining the Copyright Board – My ALAI Presentation
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2014 May 24 – Privacy Injunctions in the Age of the Internet and Social Media: PJS v News Group Newspapers
2014 May 5 – My Appearance Before the Trade Committee on the TPP
2014 April 27 – Orphan Works: the Canadian Solution
2014 April 13 – Law an Innovation: Is Intellectual Property a Path to Progress
2014 April 8 – Canada to Amend PIPEDA With the Digital Privacy Act
2014 April 7 – CASL Don’t Forget About the Computer Program “Malware” and “Spyware” Provisions
2014 March 30 – Blocking Orders Against IPs Legal in the EU: UPC Telekabel Wien
2014 March 3 – Aereo Infringes Says International Associations and Copyright Scholars to SCOTUS
2014 March 1 – Canada’s Anti-SPAM Law CASL Applies to You Even if You Aren’t in Canada
2014 February 13 – When Hyperlinks Infringe Copyright: Svensson v Retriever Sverige
2014 February 11 – IP and the Digital Economy in the Federal Budget
2014 February 10 – McCarthy Tétrault Releases CASL Compliance Toolkit
2014 January 17 – Copyright Law 2013: The Year in Review
2014 January 8 – Excluding Damages for Wrongful Contract Terminations: AB v CD
2014 January 5 – The Google Book Project: Is It Fair Use?
2013 December 24 – Robinson v Cinar in the Supreme Court
2013 December 18 – CRTC FAQ on CASL
2013 December 16 – The Industry Canada CASL Regulations and RIAS: A Lost Opportunity
2013 December 14 – Legislative and Judicial Approaches to Internet Regulation: CASL as a Case Study
2013 December 4 – CASL Industry Canada Regulations: Summary and Comments
2013 December 4 – Industry Canada CASL Regulations Published
2013 November 26 - Intellectual Property Education: Are Canadian Law Schools Doing Enough to Support Innovation?
2013 November 18 – Streaming Websites Blocked in UK: Paramount v Sky
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2013 November15 – Alberta PIPA Violates Charter Says Supreme Court in IPC v United Food and Commercial Workers
2013 November 13 – CASL Marches Towards Starting Gate
2013 November 7 – CASL – AN FAQ
2013 November 5 – Combating Counterfeit Products Act Before Standing Committee
2013 October 28 – OSFI Sets Sights on Cyber Security Threats with Release of Guidance
2013 October 27 – IT.CAN Conference Highlights
2013 October 17 – isoHunt Shut Down
2013 October 15 – Is Unauthorized Online Copying Theft and Does it Hurt Creators?
2013 October 10 – Dr Ficsor on the Marrakesh Treaty
2013 October 10 – UGC Under Canadian Copyright Law: Does the Exception Conform to International Law?
2013 October 6 – Cyber Security and Lawyers
2013 October 1 – Using Social Networking in Business Development
2013 September 30 – Canada’s Anti-SPAM Law and Universities
2013 September 18 – Internet and Copyright: Significant Developments
2013 September 16 – Michael Geist on CASL: Flaws Not Festivus Grievances
2013 September 10 – U.S. Federal Circuit Bar Association IP Conference Coming to Toronto
2013 September 9 – NSA Spying, Cyber Security and Liability under Canada’s Anti-SPAM Spyware Law CASL
2013 September 5 – Copyright: Cases and Commentary on the Canadian and International Law
2013 September 3 – Private Copying Levy on Death Row
2013 August 15 – Supreme Court Take Another Copyright Case: Canadian Artists’ Representation v National Gallery of Canada
2013 July 18 – Aereo Heading to the US Supreme Court
2013 July 17 – Merck Awarded Blockbustser Damages for Apotex’s Patent Infringement
2013 June 27 – Developments in Computer, Internet and E-Commerce Law (2012-2013)
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2013 June 19 – Representations, Warranties and Indemnities in IT Transactions
2013 June 18 – Implications of Canada’s Anti-SPAM Legislation (CASL) for IT Business
2013 June 17 – Retirement of Mario Bouchard from Copyright Board
2013 June 12 – Internet Pharmacies Selling Drugs to Americans Illegal: Ontario College of Pharmacists v Global Pharmacy Canada
2013 June 7 – Challenges of Cloud Computing
2013 June 3 – C-56 Combating Counterfeit Products Act gets Second Reading in House
2013 May 28 – Making Social Networks Remediate Defamation Enabled by Their Platforms: McKeogh v Facebook
2013 May 27 – Liability of Ex-Employees for Breach of Confidence: Vestergaard Frandsen v Bestnet Europe
2013 May 21 – Are Smartphones Computer Systems Under the Criminal Code? R v Cockell
2013 May 14 – Privacy Commissioners Speak About Getting Accountability Right at CLHIA Conference
2013 May 10 – Problems with Copyright Assignments: Righthaven, Tremblay and POPS
2013 May 6 – Fair Use for Australia? A Report From the Kernaochan Centre
2013 April 29 – Courts Busy With Copyright: Meltwater UKSC, Viacom v YouTube, UMG v Escape, Cariou v Prince
2013 April 26 – World Intellectual Property Day
2013 April 16 – CRTC Reports on CASL Consultation
2013 April 8 – Access Copyright Moves to Collect Royalties
2013 April 8 – Cablevision: How It and Its Doctrines Have Fared Around the World
2013 April 8 – Capital Records v ReDigi: Resale of Digital Music Copyright Infringement
2013 April 5 – Crown Bound by Copyright Act: Manitoba v Access Copyright
2013 April 2 – Aereo Legal for Now in New York
2013 March 28 – Wiretap Intercept Rules Apply to Mobile Text Messages says Supreme Court: R v TELUS
2013 March 25 – A Big Week i Copyright, Kirstaeng, isoHunt and Associated Press v Meltwater
2013 March 20 – Managing Intellectual Property North America Awards
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2013 March 17 – UMB v Veoh: US Appeal Court Sides with Veoh in Appeal
2013 March 13 – Criminal Copyright Convictions of The Pirate Bay Operators “Necessity in Democratic Society” says Human Rights Court
2013 March 13 – How to Avoid Misleading Disclosures in Online Advertising
2013 March 8 – Internet Retransmission of Broadcasts a Communication to the Public, Rules the CJEU
2013 March 4 – The Combating Counterfeit Products Act
2013 March 1 – Canada’s Anti-Spam Law (CASL), Too Much of a Good Thing
2013 February 21 – Charities, Non-Profits and CASL
2013 February 20 – Google Liability for Defamation on Blogger.com: Tamiz v Google
2013 February 19 – CASL: the Submissions to Industry Canada on the Draft Regulations
2013 February 18 – Has the CRTC Compromised its Judicial Independence on CASL?
2013 February 13 – Supreme Court Hears Oral Argument in Cinar/Robinson Copyright Cases (Updated)
2013 February 6 – Google Wins Sponsored Links Case in Australia
2013 February 5 – Evaluating the Industry Canada CASL Regulations: My Submission to the Consultation
2013 February 1 – Evaluating the Industry Canada CASL Regulations: Countering Cyber-Security Threats
2013 January 30 – Evaluating the Industry Canada CASL Regulations: Defining Commercial Electronic Message
2013 January 25 – Evaluating the Industry Canada CASL Regulations: Jurisdictional Overreach
2013 January 22 – Evaluating the IC CASL Regulations: the B2B Exception and Non-Business Entities
2013 January 21 – Evaluating the Industry Canada CASL Regulations: the B2B Exception (Part I-SMEs)
2013 January 18 – Evaluating the Industry Canada CASL Regulations: Family Relationships and Personal Relationships
2013 January 16 – Evaluating the Industry Canada CASL Regulations: How to Assess Them
2013 January 15 – CRTC Guidance on Interpreting its CASL Regulations and Guidelines at the IT.CAN/TCLG Meeting
2013 January 14 – Evaluating the Industry Canada CASL Regulations: Why They are Needed
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2013 January 12 – Intellectual Property Law in Canada: Cases and Commentary
2013 January 11 – Copyright Law 2012: The Year in Review in Canada and Around the World
2013 January 4 – Industry Canada CASL Draft Regulations Now Available
2013 January 3 – Most Popular Intellectual Property and Technology Law Blogs
2012 December 31 – Canadian Law Blog Awards Announced
2012 December 28 – Strangest Copyright Cases of 2012
2012 December 21 – Copyright Board Refuses CAB Request to Rescind CSI Tariff
2012 December 20 – Industry Canada CASL Regulations Coming
2012 December 17 – Crown Copyright and Translations, Keatley Surveying v Teranet
2012 December 14 – Homeaway.com Decision Threatens to Re-write Trade-mark Law in Canada (But Is it for the Better?)
2012 December 14 – Supreme Court Nixes Value for Signal Regime
2012 December 12 – Justice Rothstein on the Copyright Pentology
2012 December 11 – CRTC Clarifies Questions About CASL
2012 December 7 – Copyright Board to Construe the Making Available Right
2012 December 4 – Flexible Exceptions to Copyright Have Negative Economic Costs, Says Study
2012 November 28 – Search Engines Liability for Defamation – Trkulja v Google
2012 November 14 – SOCAN Sued for $15 Million Refund of Ringtones Payments
2012 November 9 – Making European Copyright Fit for Purpose in the Age of the Internet
2012 November 8 – Viagra Patent Declared Invalid by Supreme Court of Canada
2012 November 7 – Change and the Copyright Modernization Act
2012 November 3 – Technology Challenges Law
2012 October 30 – Copyright Modernization Act Soon to be Law in Canada
2012 October 27 – IPC v UFCW Charter/Privacy Case Going to Supreme Court (Updated)
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2012 October 21 – Charter Protects Employees’ Privacy in Data Stored on Employer Computers Rules Supreme Court in R v Cole
2012 October 16 – CRTC Issues CASL (Canada’s Anti-Spam Law) Guidelines, Background and Commentary
2012 October 10 – The French Hadopi Law, its History, Operation and Effectiveness
2012 October 8 – Copyright Board Values Music Used in Online Music Services
2012 October 3 – Upcoming IP/IT Events You Won’t Want to Miss
2012 September 28 – Privacy Protects Anonymity in Cyberbulling Case Says Supreme Court
2012 September 26 – When a Tweet Crosses the Line
2012 September 24 – Even More on Access Copyright and the Supreme Court: Eviscerated or Not?
2012 September 24 – Canada a Country in Copyright Transition Says US Congressional Anti-Piracy Caucus
2012 September 20 – Are “Browse Wrap” Agreement Enforceable After the Century 21 v Rogers Communications Case?
2012 September 12 – Did the Supreme Court Eviscerate Access Copyright’s Business Model? A Reply to Michael Geist
2012 August 28 – IVI Copyright Injunction in the Public Interest Says US Appeals Court
2012 August 24 – Was the $675,000 Damage Award Against Joel Tenenbaum for File Sharing Excessive?
2012 August 23 – Fair Use for Australia?
2012 August 20 – The Andersen P2P File Sharing Study on the Purchase of Music CSs in Canada
2012 August 13 – Google’s Plans to Prioritize Legitimate Online Content
2012 August 8 – Understanding Flava Works v myVidster: Does Inline Linking Infringe Copyright?
2012 July 31 – Did the Supreme Court Supplant the Market for Access Copyright Licenses?
2012 July 23 – Supreme Court Decisions to Affect Future Copyright Board Cases
2012 July 12 – The Supreme Court Rules on Copyright in a Pentology of Cases
2012 July 9 – Supreme Court of Canada to Release Reasons in Five Copyright Cases
2012 June 29 – Copyright Bill C-11 Passes Senate and Given Royal Assent (Updated)
2012 June 22 – My Remarks to the Senate Committee Studying Bill C-11
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2012 June 21 – Developments in Computer, Internet and E-Commerce Law (2011-2012)
2012 June 3 – So You Want to Protect Computer Programs by Copyright, the Oracle v Google and SAS v WPL Cases (Updated)
2012 May 23 – Contracting For a Cloud Computing Deal?
2012 May 22 – New CASL Regulations Coming But Will They Fall Short?
2012 April 27 – CASL in Force in 2013
2012 April 26 – Optus Loses “TV Now” Copyright Appeal Down Under
2012 April 25 – Social Media, Intellectual Property and the Workplace, is There a Gap in the Law?
2012 April 20 – iiNet Not Responsible for Customers’ Infringing Acts Says Australia High Court
2012 April 20 – Holocaust Remembrance and Copyright
2012 April 17 – Value for Signal Case in Supreme Court Today
2012 April 1 – Robert Levine and Brett Danaher at CMW
2012 March 29 – Reflections on the New CRTC CASL Regulations
2012 March 14 – CRTC Finalizes CASL Regulations
2012 March 13 – Bill C-11 Ready for Third Reading
2012 March 12 – Michael Geist: A Question of Values
2102 March 3 – No Freedom to Hack Access into the Internet, Says US Judge
2012 March 1 – B-10 Outsourcing Guideline Applies to Cloud Computing Says OSFI
2012 February 27 – Why is the EU Asking the ECJ to Review ACTA and Does it Matter?
2012 February 22 – Keeping The Pirate Bays at Bay: Using Blocking Orders to Curtail Infringements
2012 February 19 – Bill C-11 off to Legislative Committee (Updated)
2012 February 15 – Is Google News Legal? (Updated)
2012 February 9 – ISPs Not Broadcast Undertakings Says Supreme Court
2012 February 8 – Bill C-11 to be Law by April
2012 February 8 – Reining in the Rhetoric on Copyright Reform
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2012 February 2 – P2P File Sharing Hurts Music Sales in Canada, Study Finds
2012 February 1 – Chief Justice Asks: Will Accuracy and Fairness be Casualties of the Social Media Era?
2012 January 29 – Redefining Copyright in the Digital Era
2012 January 26 – EU Commission Proposes Comprehensive Reform of Data Protection Rules
2012 January 18 – Ontario Recognizes Privacy Tort of Intrusion Upon Seclusion
2012 January 18 – Do Linking Sites Infringe Copyright?
2012 January 16 – Supreme Court to Hear Whether ISPs are Broadcasting Undertakings
2012 January 13 – Copyright Law 2011 – The Year in Review in Canada and Around the World
2012 January 9 – Cyberlockers, Social Media Sites and Copyright Liability
2012 January 9 – Law Society Gives Lawyers Social Media Guidance
2012 January 3 – Will it be Illegal to Recommend a Dentist Under Canada’s New Anti-Spam Law (CASL)?
2012 January 2 – France Animation v Robinson – a Case Comment
2011 December 31 – Canadian Patent Office Allows Amaon.com’s “one-click” Patent
2011 December 23 – Canada is Market for TPM Trafficking and Bittorent Indexing Sites says USTR Report
2011 December 14 – DNS Blocking and Filtering in the EU
2011 December 9 – Webcasts of the Supreme Court Copyright Cases Now Available
2011 December 9 – UK: “Not Practical” to Adopt US Fair Use
2011 November 25 – Copyright Coming to the Supreme Court of Canada
2011 November 5 – Jurisdiction in the Internet Age
2011 October 28 – IT.CAN Annual IP Update
2011 October 28 – Legislative Committee for C-11
2011 October 21 – Supreme Court Denies Leave in Satellite Radio Copyright Case
2011 October 20 – Hyperlinking and ISP Liability Clarified by Supreme Court in Crookes Case
2011 October 19 – Copyright Bill C-11 Gets Second Reading in the House of Commons
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2011 October 17 – Canada’s New Anti-Spam Law: Too Much of a Good Thing?
2011 October 11 – Belgium ISPs Ordered to Block The Pirate Bay
2011 October 4 – ASCAP Case Highlights Differences in Canadian and US Copyright Law
2011 October 3 – Some Observations on Bill C-11: The Copyright Modernization Act
2011 September 30 – Canada Signs ACTA
2011 September 29 – Supreme Court to Hear “Value for Signal” Appeal
2011 September 27 – Copyright and Privacy Bills to be Introduced in House of Commons
2011 September 27 – Signing Ceremony for the Anti-Counterfeiting Trade Agreement (ACTA) this Weekend
2011 September 20 – Electronic Commerce Protection Regulations – Much Work Remains
2011 September 15 – UK Culture Secretary Calls for Boldness in Dealing With Online Piracy
2011 September 10 – What’s Next for Copyright Reform in Canada? (Updated)
2011 September 8 – Website Terms, Copyright Used to Shut Down Real Estate Data Scraping in Century 21 v Rogers
2011 September 7 – Fixing CASL: Comments on the Draft CRTC and Industry Canada Regulations
2011 September 7 – Indirect Theories of Copyright Liability
2011 September 6 – Technological Change and Copyright
2011 August 24 – Are Music Storage Lockers Legal in the US?
2011 August 24 – University Course Packs Going Digital
2011 August 10 – UK Moving Ahead with Graduated Response After Hargreaves Review of IP
2011 August 4 – UK to Get Even Tougher with IP Crime
2011 August 3 – UK Proposals to Modernize UK Copyright Act Released
2011 August 2 – Government of Canada Launches Anti-Spam Information Website
2011 August 1 – UK Copyright Caselaw Update: The Lucasfilm, BT, ITV and Meltwater Cases
2011 July 18 – Draft FISA (Anti-SPAM) Regulations Published by CRTC and Industry Canada (Updated)
2011 June 24 – C-32 Copyright Bill Described in WTO Reports
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2011 June 20 – Who Bears the Risk of Loss When a Corporate Bank Account is Hacked?
2011 June 16 – Is an Internet Posting of a Work a World-Wide Publication for Copyright Purposes?
2011 June 15 – Developments in Computer, Internet and E-Commerce Law (2010-2011)
2011 June 13 – UN Report on Internet Disconnection Flawed and Contrary to Jurisprudence
2011 June 3 – Throne Speech Promises Swift Passage of Copyright Amendments
2011 May 30 – G8 Declaration: Internet and IP Critical to Innovation
2011 May 26 – A Masterpiece for Brand Owners – The Supreme Court of Canada Makes it Easier to Enforce Your Trade-Mark
2011 May 25 – Rethinking CASL (with Lorne Salzman)
2011 May 15 – Supreme Court Rules on Whether Access Laws Apply to Records of PMO But Not Which Records are Personal Information
2011 May 7 – The OPC on Online Tracking, Profiling and Targeting and Cloud Computer
2011 May 4 – Significant Privacy law Decision: Leon’s Furniture v Alberta (IPC)
2011 May 2 – Canada Back on the USTR 2011 Special 301 Watch List
2011 April 25 – C-32 and the BlackBerry PlayBook: A Reply to Michael Geist
2011 April 14 – YouTube Adopts “Copyright School” to Stop Copyright Infringement
2011 April 14 – New Zealand Passes Law to Reduce Online File Sharing
2011 April 13 – Charlie Crist Official Apology to David Byrne for Copyright Infringement
2011 April 12 – Who Profits from Piracy?
2011 April 11 – Liberal Digital Canada Plan and Copyright
2011 April 8 – Conservative Party Platform on Copyright
2011 April 6 – Amazon Files Brief to Federal Court of Appeal in the One-Click Patent Case
2011 April 4 – Rethinking Notice and Notice After C-32 (Now C-11)
2011 March 25 – C-60, C-61, C-32?
2011 March 22 – US Court: Google Book Settlement Not “Fair, Adequate and Reasonable”
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2011 March 21 – What Art Copyrights and Sandwiches Have in Common
2011 March 18 – Margaret Atwood at the Parliamentary Committee on Bill C-32
2011 March 9 – Are Canada’s Copyright Laws Friendly or Unfriendly Towards Wealth Destroyers According to Prof. Geist?
2011 March 8 – iiNet Court Backs Reasonableness of Graduated Response to Stop Illegal File Sharing
2011 February 28 – Canada : Online Piracy and Problem Hurting Artists, Creators and the Economy
2011 February 22 – Clearing Up the Copyright Confusion (Part II)
2011 February 19 – Is Copyright Part of the FTA or NAFTA?
2011 February 18 – C-32 Enablement Remedy Targets Secondary Copyright Infringement
2011 February 11 – Naming Canada’s Anti-Spam/Anti-Spyware Law
2011 February 6 – Name Canada’s Anti-Spam/Anti-Spyware Law
2011 February 3 – New Permit for Exports and Technology Transfers to EU Plus Five Countries
2011 February 2 – IIC Estimates Global Economic and Social Impacts of Counterfeiting and Piracy
2011 January 31 – Google’s Search Service Exonerated from Copyright Liability by a French Court
2011 January 26 – Impacts of Bill C-28 (The New Anti-SPAM and Anti-Spyware Legislation)
2011 January 26 – En Réponse à «Pour démêler la confusion à l’égard du droit d’auteur» (Clearing Up the Copyright Confusion), du Professeur Michael Geist
2011 January 18 – Robertson 2 Copyright Class Action Settles
2011 January 13 – Copyright Law 2010 – The Year in Review in Canada and Around the World
2011 January 9 – A Response to Professor Michael Geist’s Clearing Up the Copyright Confusion
2011 January 9 – EU Highlights Role of ISPs, Damages and Trade Agreements in Reducing IP Infringements
2011 January 6 – Canada Passes Anti-Spam and Anti-Spyware Law
2011 January 2 – Signs Your Ex Wants to Get Back With You
2010 December 23 – Copyright Board Grants Interim Relief to Access Copyright
2010 December 20 – Teachings From the Blizzard WoW Case
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Barry Sookman Lawyer Profile
2010 December 16 – Federal Court of Appeal Decides the Satellite Radio JRs
2010 December 16 – Liberals Announce Proposals to Amend Bill C-32
2010 December 16 – Bill C-28 (SPAM Bill) Gets Royal Assent
2010 December 15 – Is There Copyright in a Directory Produced by a Computer? The Telstra Case
2010 December 14 – An FAQ on TPMs, Copyright and Bill C-32
2010 December 8 – Key Issues on the Legal Protection for TPMs Under Bill C-32
2010 December 1 – My C-32 Opening Remarks
2010 November 27 – The Pirate Bay Operators Lose Criminal Appeal and Sent to Prison
2010 November 24 – Separating Copyright Fiction From Facts About C-32’s TPM Provisions
2010 November 18 – Legislative Committee for C-32 Selected
2010 November 17 – Bill C-32’s Fair Dealing and Other New Copyright Exceptions
2010 November 15 – Amazon.com Going to the Federal Court of Appeal
2010 November 9 – Some Observations About the Debates on Bill C-32 in the House of Commons
2010 October 30 – Bill C-32 – Impacts on the IT Community
2010 October 25 – Turning Up the Rhetoric on C-32’s TPM Provisions
2010 October 21 – Export Controls Alert: Canada Issues New Guidance on Encryption Controls
2010 October 15 – With “One Click”, Business Methods Are Patentable in Canada
2010 October 11 – EMI Records v UPC – the Case for Legislative Solutions to Illegal File Sharing
2010 October 11 – The Anti-Counterfeiting Trade Agreement (ACTA) - a Summary of the Final Terms
2010 October 1 – STM to to Ministers Moore and Clement: C-32 Will Seriously Prejudice Rightsholders
2010 September 30 – Are the TPM Provisions in C-32 More Restrictive Than Those in the DMCA?
2010 September 27 – Separating Facts from Hype About C-32
2010 September 20 – copyrightgetitright
2010 September 17 – RCMP Report Details Canada’s Serious Counterfeiting and Piracy Problems
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Barry Sookman Lawyer Profile
2010 September 16 – OECD Report: IPR Reforms Deliver Positive Economic Results
2010 September 15 – Geist: Tough IP Laws Suppress Political Dissent
2010 September 3 – Federal Court of Appeal Dismisses Tariff 22 JRs
2010 August 23 – ACTA progress Announced with Plans to Release Final Draft in September
2010 August 14 – Toronto Star Says Proposed Exception for Education in C-32 Needs Rethinking
2010 August 13 – SOCAN Seeks Leave to Supreme Court on Whether an Online Preview is a Fair Dealing
2010 August 13 – “Musicians Have Rights, Too”, Maia Davies
2010 August 5 – Property and Progress Made Possible by Respecting Copyrights
2010 July 29 – MGE v GE – What Did the 5th Circuit Decide About the Scope of the DMCA TPM Provisions and Was it Right?
2010 July 27 – Copyright Office Exempts Six Classes of Works from DMCA’s Access Control Anti- Circumvention Prohibitions
2010 July 27 – Educational Tariff Certified by Copyright Board Upheld by Federal Court of Appeal
2010 July 24 – Copyright Doesn’t Protect Dolls with a “Bratty Look”
2010 July 23 – Study Shows 97% of Torrents Relate to Infringing Copyright Content
2010 July 21 – Canadian Government Undertaking Industry Consultations on Cryptography Export Permit Process
2010 July 20 – ACTA and TPMs
2010 July 18 – When do Broadcasters Reproduce Works ? The Copyright Board Clarifies the Law in the Commercial Radio Tariff Case
2010 July 4 – ACTA Will Not Create New IPRs or Interfere with Fundamental Liberties Statement Says
2010 July 2 – Are Business Methods Patentable Under Bilski in the US?
2010 June 23 – Minister Moore’s Speech on C-32
June 2010 18 – Export Controls Alert: Canada’s Response to Liberalization of Controls on Ancillary Encryption
2010 June 17 – Legends and Reality About the 1996 WIPO Treaties in the Light of Certain Comments on Bill C-32
2010 June 3 – Some Thoughts on Bill-C-32: An Act to Modernize Canada’s Copyright Laws
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Barry Sookman Lawyer Profile
2010 May 27 – Future of Music Coalition Panel: DC Policy Day 2010 – Focus on ACTA
2010 May 26 – Developments in Computer, Internet and E-Commerce Law (2009 – 2010)
2010 May 25 – Government Introduces Bills to Fight SPAM and Spyware and to Amend PIPEDA
2010 May 21 – IsoHunt Permanently Enjoined by US Court
2010 May 19 – Copyright and the Great Socialist Degradation
2010 May 17 – Are Internet Previews of Music a Fair Dealing Under Copyright?
2010 May 14 – John Degen “Weapons Down, Please”
2010 May 13 – What do LimeWire, Napster, Kazaa, and IsoHunt all Have in Common?
2010 May 11 – “A Robust Copyright Regime Would – Permit Market Forces to Operate Properly”
2010 May 10 – Geist: “STFU” Until You See the Bill”
2010 May 6 – Canada’s New Copyright Bill: What Will it Look Like?
2010 April 30 – Canada Again Named to USTR’s Priority Watch List for Weak IP Laws
2010 April 30 – Canada Called out for Weak Copyright Laws by IFPI and at the Heritage Committee
2010 April 26 – Graduated Response: A Least Cost Solution to Reducing Online Copyright Infringement
2010 April 21 – The Owens Analysis of the Canadian Copyright Consultations: What are the Implications?
2010 April 19 – Is Graduated Response Necessary to Protect Human Rights From Online Copyright Infringement?
2010 April 15 – Levy Debate Sparks Impassioned Please in Parliament for Copyright Reform
2010 April 14 – Calling Out Misreporting About ACTA
2010 April 13 – More Hype Than Facts About ACTA From its Critics
2010 April 6 – Develop a Prudent Intellectual Property Policy by Reading Shakespeare’s Hamlet, says Judge
2010 April 2 – Injunction to Issue Against IsoHunt in a Busy Month for the Courts
2010 March 22 – Does Canada Already Have Fair Use?
2010 March 18 – Should Canada Adopt “Fair Use” as Proposed by NDP MP Charlie Angus?
2010 March 15 – God of War and the Idea Expression Dichotomy in Copyright Law
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Barry Sookman Lawyer Profile
2010 March 11 – Murdoch Urges Reforms to Stem Online Copyright Free Riding
2010 March 10 – Canadian Government Launches Consultations on Encryption Controls
2010 March 9 – A Framework for Voluntary Graduated Response in Online Copyright Enforcement
2010 March 8 – What Did the Supreme Court of Canada Say About Notice and Notice in the SOCAN Tariff 22 Case?
2010 March 4 – The Speech From the Throne: a Digital Strategy and IP Reform
2010 February 25 – Misinterpreting the IPR 2010 Report
2010 February 19 – Canada Again in the Penalty Box Over Poor IP Laws and Enforcement According to 2010 IIPA 301 Report
2010 February 17 – Reflections on the Liberal Roundtable on the Digital Economy
2010 February 16 – Supreme Court Kills Fundamental Breach in Enforcement of Liability Disclaimers in Tercon
2010 February 12 – Digital Copying and Libraries: Copyright and Licensing Considerations
2010 February 11 – How Can Copyright Reform Best Balance the Rights of Creators, Intermediaries and Users?
2010 February 9 – Stealing is Not a Form of Flattery, Nor is it Sincere…
2010 February 8 – My New Intellectual Property Law Case Book
2010 February 8 – The Fallout from iiNet: Markets and Laws Failing in Face of Net Piracy
2010 February 5 – Debating Graduated Response at the Center for Democracy and Technology
2010 February 5 – Where is Canada’s Plan for the Digital Age?
2010 February 2 – A Reply to ACTA Critics
2010 February 1 – The Costs and Benefits of Graduated Response in Copyright Enforcement
2010 January 26 – Clinton’s Remarks on Internet Freedom
2010 January 25 – Challenges for Digital Britain: Broadband Access, Copyright and Business Models
2010 January 20 – Graduated Response and Copyright: An Idea That is Right for the Times
2010 January 19 – The Italian Pirate Bay Case: What did the Court Order and Why?
2010 January 18 – The Epidemic of Online Book Piracy
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Barry Sookman Lawyer Profile
2010 January 15 – Canadian and International Copyright - The Year in Review (2009) Presentation for LSUC
2010 January 12 – Eight Things worth Proroguing on TV: Pirating TV Shows from BitTorrent
2010 January 11 – Editions du Seuil v Google: What Reasons did the French Court Give for Holding Google Liable for Copyright Infringement?
2010 January 7 – Critiquing Copyright Canards
2010 January 4 – Is Minister Clement Following the UK to Bring us a Much Needed “Digital Canada” Strategy?
2010 January 1 – ITIF Report: Strategies for Reducing Digital Piracy
2009 December 28 – Toying with Funny Math to Downplay Canada’s role as a Piracy Haven
2009 December 25 – Fung and Isohunt found liable for Inducing Worldwide Copyright Infringement
2009 December 23 – Dr. Ficsor is Right: Prof. Geist is Wrong About the WIPO Internet Treaties
2009 December 17 – Open Source Movement Gets Big Boost From Copyright Laws and DMCA in Jacobson v Katzer
2009 December 16 – UK Court Finds Online Gaming System Non-Patentable Subject Matter
2009 December 15 – Canada’s Embarrassing Place in the BitTorrent Rankings, Torrentz.com and IsoHunt World Leaders
2009 December 14 – Non-Commercial P2P File Sharing is Not Fair Use Says Court in Sony BMG v Tenanbaum Case
2009 December 13 – UK Launches Consultations on Copyright Exceptions
2009 December 8 – Michael Geist Inflates Pending Lists Claim to Vilify Record Labels
2009 December 5 – Supreme Court Convicts Alberta Man for Internet Child Luring
2009 December 4 – Rejection of Amazon’s One-Click Patent Attacked in Appeal Brief
2009 November 28 – Getting the Straight Goods on ACTA, Check Your Sources
2009 November 27 – Mininova Gona, Who’s Left and Where are They Located?
2009 November 24 – OECD Counterfeiting Report Misinterpreted to Support Myth of Canada as a Low Piracy Country
2009 November 22 – Graduated Response Mapped out in UK Digital Economy Bill
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Barry Sookman Lawyer Profile
2009 November 22 – More Fickle Than Fair: Why Canada Should Not Adopt a Fair Use Regime (with Dan Glover)
2009 November 20 – Support for ACTA Urged by Over 20 Leading Organizations
2009 November 20 – MPAA ACTA Letter to Chairman Leahy
2009 November 20 – Sacking Employees for Misuse of Computers and Internet Access – Pilquin v. Devon Canada Corporation
2009 November 19 – Magnitude of Counterfeiting and Piracy of Tangible Products
2009 November 18 – Fear Mongering and Misinformation Used to Slag ACTA
2009 November 16 – OHRLP Publishes Leading Submissions to the Copyright Consultations
2009 November 15 – Google Amends Settlement with Authors and Publishers in U.S. Litigation
2009 November 13 – Gilham v R – UK CA Conviction for Selling Mod Chips
2009 November 12 – © The Way Ahead: A Copyright Strategy for the Digital Age
2009 November 11 – Lord Mandelson Speech Transcript on P2P Copyright and Creative Industries
2009 November 10 – 100,000 Voters Who Don’t Exist
2009 November 9 – Rhetoric Exaggerates ACTA Leaked Negotiations Text
2009 October 27 – Industry Committee Amends Anti-Spam Bill (ECPA)
2009 September 13 – Copyright Reform in Canada-Woodrow Wilson International Centre for Scholars
2009 September 15 – Why Canada Should Not Adopt Fair Use: A Joint Submission to the Copyright Consultation (with Dan Glover)
2009 September 25 – Copyright Reform for Canada: What Should We Do? My Submission to the Copyright Consultation
2009 August 6 – What Happens When Copyright Goes Digital
2009 July 28 – Microsoft Wins Substantial Damages Award for Unauthorized Distribution of its Software,
2009 July 28 – The Pirate Bay – Operators Fined for Aiding and Abetting Copyright Infringement
2009 May 28 – Anti-Spam Bill Webinar, Anti-Spam Bill Raises Concerns, and Head to Head on Copyright (Video)
2009 May 19 – Developments in Computer, Internet and E-Commerce Law
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Barry Sookman Lawyer Profile
2009 May 12 – Anti-Spam Bill Raises Concerns
2009 May 7 – Head to Head on Copyright (Video)
2009 April 30 – A Time for Change: Toward a New Era for Intellectual Property Rights in Canada
2009 February 23 – Bill C-61 A presentation for ITAC
2009 January 15 – Law Society of Canada: Copyright Year in Review (2008)
2008 November 7 – The SAC Proposal for the Monetization of the File Sharing of Music in Canada: Does it Comply with Canada’s International Treaty Obligations Related to Copyright?
2008 July 16 – Proposed Canadian Copyright Reform – Bill C-61
2008 February 3 – Facebook fair for copyright of Canada: replies to professor Geist
2007 June 26 – Toronto Computers Lawyers Group Year in Review (2006-2007)
2006 June – Toronto Computers Lawyers Group Year in Review (2005-2006)
Continuing Legal Education and Other Speeches
September 15, 2016 – McT: Protect Your Brand – Practical Tips & Topical IP Issues
June 28, 2016 – McT: TPP – How Will This Impact Your Business?
June 14, 2016 – Toronto Computer Lawyers’ Group Year in Review
May 25, 2016 – ALAI Canada, Reimaging Copyright Board – Lessons from Other Jurisdictions
March 15, 2016 – Fordham TPP: The Trouble with TPP: Canadians Get Their Chance to Speak out
January 26, 2016 – ALAI Copyright & Technology: Challenges to Authors and Copyright Holders
January 21, 2016 – LSUC 20th Annual IP Law: Year in Review
January 19, 2016 – CIGI Roundtable on Positioning Canada to be a Leader in the Global IP System
December 10, 2015 – 21st Annual Regulatory Compliance for Financial Institutions: Cyber Threats, Privacy, Security and Evolving Data Breach Obligations
December 8, 2015 – Hill Times: TPP Forum
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Barry Sookman Lawyer Profile
November 12, 2015 – CIGI Conference on TPP and Intellectual Property, Panelist
October 5, 2015 – Association of Canadian General Counsel: Cloud Computing: Security and Privacy Challenges and Legal Risks
October 2, 2015 - AIPF 2015 Annual Meeting: Developments on Copyright Law in Canada
June 25, 2015 – McCarthy webinar: PIPEDA Digital Privacy
June 10, 2015 – Toronto Computer Lawyers’ Group: Year in Review
June 8, 2015 – ALAI Cinar v Robinson
May 13, 2015 – McCarthy 4th Annual Technology Law Summit
May 8, 2015 – Canadian Music Week Global Forum
May 4, 2015 – IT.Can Spring Program Fundamentals of technology Contracting
May, 2015 – McCarthy Technology Law Summit – Cloud computing
April 30, 2015 – Lexpert Conference - CASL Overview and The Anti-Spam Provisions
April 30, 2015 – ASPER INTLAW CONFERENCE - April 30th, 2015Cybersecurity Challenges and Responses
April 24, 2015 – LSUC 12 minute civil litigator
April 14, 2015 – McT Technology & Innovation Summit: TPP Overview
April 7, 2015 – OBA CASL
April 1, 2015 – McCarthy Webinar: Data Breach
April, 2015 – McCarthy Program CASL: The Good, The Bad, and the Ugly
January 22, 2015 – LSUC 2015 Year in Review
January 15, 2015 – SIIA CASL
June 17 & 18, 2014 – IT.CAN Spring Forum
June 5, 2014 – Toronto Computer Lawyers’ Group: Year in Review
May 9, 2014 – Canadian Music Week Global Forum
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Barry Sookman Lawyer Profile
April 28-29, 2014 – National Technology Client Summit
April 24, 2014 – Fordham: 22nd Annual Conference on Intellectual Property Law and Policy: Orphan Works
April 17, 2014 – Electronic Retailing Association: CASL webinar presentation on CASL
April 15, 2014 – Canadian Centre for Ethics & Corporate Policy: Complying with Canada’s New Anti-Spam Legislation (CASL)
April 12, 2014 – CIGI Institute for New Economic Thinking: Law and Innovation: Is Intellectual Property a Path to Progress
April 7, 2014 – OBA: Countdown to Canada’s Anti-Spam Legislation: Make Sure You Are Ready
March 7, 2014 – ALAI Canada: Cinar v Robinson
March 4, 2014 – A Primer for the Legal Committee of the Global Automakers of Canada: CASL, the Final Regulations, the RIAs and the FAQs
February 18, 2014 – CASL webinar presentation for the Canadian Bar Association – British Columbia
February 7, 2014 – CASL presentation for Concordia University
January 16, 2014 – Year in Review: Copyright (2013) for Law Society of Upper Canada (LSUC)
January 15, 2014 – CASL presentation for Software & Information Industry Association (SIIA)
November 13, 2013 – Canadian Institute: Regulatory Compliance for Financial Institutions Best practices for complying with the OSFI B-10 outsourcing regulations
November 7, 2013 – Quebec Bar Association Conference on Anti-Spam Law
October 25, 2013 – IT.CAN Complex IT Service Agreements (Panel)
October 10, 2013 – IP Osgoode, User Generated Content under Canadian Copyright Law: Is the UGC exception in conformity with international treaty standards?
October 8, 2013 – Canadian Publishers’ Council: Canada’s Anti-spam Law (CASL): A Primer for members of the Canadian Publishers’ Council
October 5, 2013 – Association of Canadian General Counsel: Cloud Computing: Security and Privacy Challenges and Legal Risks
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Barry Sookman Lawyer Profile
September 30, 2013 – Ontario Bar Association TECHxpo 2013, Ethical and Efficient Ways to Use Social Networking in Business Development
September 27, 2013 – Canadian Association of University Solicitors (CAUS) 2013 Conference Canada’s Anti- spam Law (CASL)
September 17, 2013 – US Federal Circuit: Trade and Intellectual Property Issues in Global Recovery Economies: Best Practices, Significant Recent Developments: Internet and Copyright
June 27, 2013 – Toronto Computer Lawyers’ Group: The Year in Review: Developments in Computer, Internet, and E-Commerce Law (2012-2013)
June 18, 2013 – IT.CAN Spring Program: Representations, Warranties and Indemnities – A Primer (with Helen Aston IBM)
June 6, 2013 – The Six‐Minute Business Lawyer 2013, The Law Society of Upper Canada, Current Issues in Negotiating IT Contracts – Challenges of Cloud Computing
May 24, 2013 – McCarthy Technology Law Summit
May 9, 2013 – CLHIA 2013 Compliance and Consumer Complaints Annual Conference: Putting all the pieces together: Canada’s Anti-spam Law (CASL)
April 5, 2013 – Fordham: 21st Annual Conference on Intellectual Property Law and Policy: Performance Rights in Copyright: Public, Private or “Digital”? Cablevision: How It and Its Doctrines Have Fared Around the World
February 26, 2013 – Justice Canada: Intellectual Property and Information Technology Law Training Day Keynote Address: Legislative and Judicial Approaches to Internet Regulation: Case Study, Canada’s Anti- SPAM Law (CASL)
February 2, 2013 – Canadian Vehicle Manufacturers' Association (CVMA) CASL and its impacts on vehicle manufacturers
January 18, 2013 – York University: presentation on CASL and its impacts on universities
January 10, 2013 – Law Society: 17th Annual Intellectual Property Law, The Year in Review – Copyright
November 3, 2012 – Ryerson, RUIT Conference: Link to Technology Dynamically: Copyright a Year in Review
October 4, 2012 – C.D. Howe Institute: Streaming the Supreme Court on Downloaded Music Royalties: Who Wins, Who Loses, Who Pays?
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Barry Sookman Lawyer Profile
October 2, 2012 – University of Toronto Law School: ESA v SOCAN
September 20, 2012 – McCarthy Tétrault Law Summit: What Every Business Needs to Know About Technology Law
September 20, 2012 – Law Society of Upper Canada, The Twelve-Minute Civil Litigator 2012: Impact of the Internet on Contract Law and the Principles of Offer and Acceptance (Century 21 Canada v Rogers Communications)
June 28, 2012 – Portfolio Management Association of Canada: Update of CASL
June 21, 2012 – TCLG: Year in Review: Developments in Computer, Internet and E-Commerce Law (2011- 2012)
June 19,2012 – IT.CAN 2012 IT Law Spring Forum: IP Indemnities – A Primer
June 14, 2012 – LEXPERT: Anti-Spam Presentation
April 25, 2012 – Law Society of Upper Canada: Old Rules for New Issues with New Media: Is There a Gap in IP Law? Employment Law and the New Workplace in the Social Media Age
April 17, 2012 – Law Society of Upper Canada: Commemoration of Holocaust Remembrance Day 2012: Working Through Copyright Issues
February 2, 2012 – Association of International Automobile Manufacturers of Canada: CASL
January 12, 2012 – Law Society of Upper Canada: 16th Annual IP Law, The Year in Review
October 27, 2011 – IT.CAN 15th Annual Conference: “IP Update – Copyright”
October 21, 2011 – Osgoode York University: Copyright Conference: “Can Canada Learn Anything from Europe?”
October 14, 2011 – Canadian Tire conference on CASL
September 22, 2011 – Canada’s Anti-spam Law: Spam & Spyware: Risks in E-Commerce
September 6, 2011 – Osgoode: Intellectual Property Law & Technology Program: Technology Focus: Internet and IT
September 2011 – LEXPERT: Canada’s New Anti-Spam Legislation: A Very Wide Objective, A Very Wide Swath
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Barry Sookman Lawyer Profile
August 5, 2011 – ABA: Forum on the Entertainment and Sports Industries: CyberRogues and Web Pirates! New Frontier of Counterfeits and Squatters in Film, Fashion & Music
June 15, 2011 – Toronto Computer Lawyers Group: Year in Review: Developments in Computer, Internet and E-Commerce Law (2010 – 2011)
February 3, 2011 – University of Toronto: Understanding Bill C-32, Copyright Modernization Act – Fair Dealing and Related New Exceptions
January 26, 2011 – IT.CAN Quarterly Roundtable Series: Impacts of the New Anti-Spam and Anti-Spyware Legislation (Bill C-28)
January 13, 2011 – Law Society of Upper Canada: 15th Annual Intellectual Property Law: The Year in Review, Copyright Update
December 8, 2010 – Insight: Rights and Copyright Bringing Canada into the 21st Century – Bill-32: Legal Protection for TPMs
November 24, 2010 – Toronto Intellectual Property Group (TIPG): Here We Go Again: Copyright Reform and Bill C-32
November 17, 2010 – Osgoode Professional Development CLE program, Understanding Bill C-32
November 11, 2010 – ITAC: Implications of Bill C-32 on software and networking November 2, 2010 – McCarthy/Edelman Digital Social Media Summit
October 29, 2010 – IT.CAN 14th Annual Canadian IT Law Association Conference: Recent Developments in IT Law
June 22, 2010 - Ministry of Government Services IT and e-Commerce law, the Year in Review
May 26, 2010 – Toronto Computer Lawyers’ Group: A Year in Review Developments in Computer, Internet and E-Commerce Law (2009-2010)
February 17, 2010 – Liberal Party Roundtable on the Digital Economy: Copyright, Intellectual Property Protection and the Future of Broadcasting in the Internet Age (Ottawa)
January 14, 2010, 14th Annual Law Society Intellectual Property Law – The Year In Review (Copyright 2009)
October 22-23, 2009 – IT.CAN, 13th Annual Canadian IT Law Association Conference, Conference Co-Chair, and Current Trends in Limits of Liability and Indemnification (Moderator)
October 14, 2009 – Woodrow Wilson Center: Internet Piracy: Copyright Law in Canada and the United States
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Barry Sookman Lawyer Profile
September 30, 2009 - Conference Board: Intellectual Property Rights Roundtable in Ottawa
September 25, 2009 – Woodrow Wilson International Center for Scholars: Copyright Law in Canada and the United States: The Digital Challenge
August 10, 2009 – Halifax Roundtable on Copyright Consultation for Minister of Canadian Heritage and Official Languages
May 29, 2009 – McCarthy Tétrault LLP Anti-Spam Bill Raises Concern (Webinar with Lorne Salzman and Charles Morgan) and E-Commerce Law
May 19, 2009 – TCLG & E-Commerce Section of OBA: Year in Review, Developments in Computer, Internet
April 30, 2009 – May 1, 2009 – IT.CAN LSUC Annual Spring Training Program
February 23, 2009 – ITAC, Copyright Reform in Canada Bill C-61 – An Overview
January 15, 2009 – LSUC 13th Annual IP Law: Year in Review, Update on Copyrights presentation with Glen Bloom
October 27, 2008 – IT.Can, 12th Annual Canadian IT Law Association Conference, Moderator
October 22, 2008 – Insight Conference: Entertainment Industries Summit: Emerging and Ongoing Canadian Copyright Issues
May 28, 2008 – Conference Board: Intellectual Property Rights Conference: A Catalyst for Innovation
May 14, 2008 – Insight Conference: (Program Chair) Copyright in Canada
April 3, 2008 – Open Innovation/Collaboration: Technology in Bloom, New Developments in Technology Law (OBA)
March 30, 2008 – Insight Conference: (Moderator) Global Licence for the Monetization of the File-Sharing of Music on the Internet
March 21, 2007, Booknet Canada: Technology Forum 2007: Digitization and the Future of Canadian Publishing: The Fight over Copyright
February 28, 2007, Dalhousie Law and Technology Institute: User Rights and Copyright: Right, Metaphor, Red Herring?
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Barry Sookman Lawyer Profile
January 18, 2008 – Law Society of Upper Canada, 12th Annual IP Law: Year in Review Conference: Are IP Rights Out of Control?
November 20, 2007 – York University, Recent Computer and Internet Law Developments in IP
October 23, 2007, Canadian Institute: (Moderator) Entertainment Industries Summit
September 19, 2007, Ministry of Government Services Commercial Law Group: Risk Issues in Outsourcing
June 27, 2007, Toronto Computer Lawyers’ Group, “The Year in Review: Computer, Internet and E-Commerce Law”
June 15, 2007, Osgoode Hall Law Professional Program, “Copyright Remedies”
May 23, 2007, Computer Law Association (Host) “Computer Intelligence”
May 14, 2007, 7th Annual IT.Can IT Law Spring Program, “Security and Privacy Issues in Outsourcing Transactions”
March 22, 2007, Canadian Institute: (Moderator) Copyright Reform: Protecting Creators’ Rights in the Digital Age
October 26, 2006 – Insight: Entertainment Industry Summit, Toronto, “Copyright Reform: Bringing Canada Up to Global Standards” (Moderator of Panel)
October 5-7, 2006 – Future of Music: 6th Annual Summit, “Format Wars: Digital Rights Management and Interoperability”
September May 29-30, 2006 – IT.Can: 6th Annual Spring Training, “IT Law Considerations for Online Transactions”
June 23, 2006 – CIO Canada: Outsourcing Summit 2006, “Termination or Remediation ― Resolving a Bad Deal”
May 25-26, 2006 – Osgoode: IP Licence Agreements, “Representations and Warranties in Licence Agreements”
April 23-25, 2006 – International Publishers’ Association: 6th Annual Copyright Symposium, “Tensions in Copyright”
April 21, 2006 – Fordham University: 14th Annual IP Conference, “IP Law and Policy, Canada and Copyright: Rogue State or Role Model?”
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Barry Sookman Lawyer Profile
April 6, 2006 – Licensing Executive Society: “RIM ATS NTP: “What Happened?”
March 27, 2006 – OBA: Technology in Bloom 2006, “Recent Copyright Developments”
March 24, 2006 – ALAI Canada: “Influence on Canadian Copyright Law”
March 3, 2006 – Rotman School of Business: “Protection for Technological Measures in Canada — What Should Canada Do?”
October 28, 2005 – IT.Can Annual Meeting, “International IT Law Update” (moderator), and debate (with David Basskin) and Professor Kerr and Professor Geist on legal protection for technological protection measures
October 25, 2005 – “Bill C-60 and Copyright Reform in Canada – The Issues, Players, and Moving Forward,” Osgoode Forum
October 3, 2005 – “Canadian Copyright Reform – An Overview for the Canadian Publishers’ Counsel,”
September 16, 2005 – “Recent Issues in Copyright,” Association of Corporate Counsel, Mount Tremblay
September 16, 2005 – Insight Conference on Copyright Reform (Chair)
September 15, 2005 – “Technological Protection Measures: Do the Anti-Tampering Provisions Go Too Far, or Not Far Enough?” Insight: Copyright Reform in Canada
June 16, 2005 – “To Outsource or Not: Yes, No, Maybe ―– How Will I Know?” CIO Outsourcing Summit
June 1, 2005 – “The Year in Review,” Toronto Computer Lawyers’ Group
May 12, 2005 – IT.Can Spring Training Program (Chair)
April 8, 2005 – “Is Copyright Keeping Up With Changes in Technology?” CBAO Conference on Technology In Bloom
April 8, 2005 – “Distribution Challenges in the Digital Universe,” Law Society of Upper Canada
February 24, 2005 – “Software and Technology Agreements,” Insight Conference
February 15, 2005 – “Sound Bytes, Sound Rights: Canada at the Crossroads of Copyright Law: The Music Industry after BMG v. John Doe,” University of Toronto Conference
February 15, 2005 – “Implications of the Patriot Act on Outsourcing in Canada,” (Chair) IT Canada Roundtable
January 25, 2005 – “Information Outsourcing” CLA Conference (Host)
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October 6, 2004 – “Significant Issues in Internet Law,” CASCON 2004
September 20, 2004 – “The implications of the Tariff 22 Decision,” IT.Can
September 19, 2004 – “Internet Liability: The Tariff 22 Case,” CBAO
June 4, 2004 – “Copyright in the Internet Age,” CAB, CCTA Copyright Symposium
June 2, 2004 – “Critical Issues in Outsourcing,” CIO Outsourcing Summit
May 31, 2004 – “Computer and Internet Law: A Year in Review,” Toronto Computer Lawyers’ Group
May 26, 2004 – “Protecting Intellectual Property Rights in IT Products” (Moderator of panel), IT.Can Spring Training Programme
May 26, 2004 – “Originality in Copyright Law” (Moderator of panel) ALAI Conference
May 11, 2004 – “Law and Politics of Open Source,” University of Toronto
April 6, 2004 – “The implications of the CCH v. Law Society Case for Canadian Publishers,” Canadian Copyright Institute AGM
March 30, 2004 – “Internet Jurisdiction,” Netlaw
February 25, 2004 – “New and Changing Business Models for Distribution of Music and Other Content,” MIT/Schulich Enterprise Forum
February 7, 2004 – “IP issues in Public Procurements,” the IP Procurement Conference
October 24, 2003 – IT.Can “Developing Interoperable and Competing Products Under Copyright and Trade Secret Law”
October 14, 2003 – Dalhousie University, Law and Technology Eminent Speaker speech “Influence of American Copyright on Canadian Copyright Law”
October 2, 2003 – IT.Can Moderated Talk on Electronic and Internet Evidence
May 28, 2003 – Toronto Computer Lawyers’ Group “IT-Internet Law – The Year in Review”
May 13, 2003 – IT.Can “Internet Law Update”
May 14, 2002 Toronto Computer Lawyers’ Group – “Annual Computer/Internet Year in Review”
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May 5, 2003 – CIO Summit panellist on Legal Issues in Outsourcing
March 4, 2003 – 45th Circuit “Enforceability of On-line Contracts”
January 21, 2003 – ALAI Canada “Influence of American Copyright Law in Canada”
May 29, 2002 Insight –Jurisdiction and the Internet
April 22, 2002 CCCA Conference – Protecting Intellectual Property Rights in the Canadian and International Market Place
April 6, 2002 IT.Can Conference on Managing and Minimizing Foreign Jurisdictional Risks on E-Commerce
March 21, 2002 NetLaw Conference – E-Commerce
January 24, 2002 Chair IT.Can Roundtable on Privacy
December 5, 2001 Canadian Institute – Structuring IP Licence Agreements
November 7, 2001 CBAO – Privacy - What is Personal Information?
June 20, 2001 Canadian Institute – E-commerce Issues
June 2001 Osgoode Hall Law School – Commercial Legal Drafting in E-Commerce
March 26, 2001 Canadian Bar Association – Internet and E-Commerce
March 8, 2001 Net Law Conference – chaired conference and gave speech on E-Commerce Legislation
February 12, 2001 Canadian Institute – Due Diligence in Internet and E-Commerce Transactions
January 15, 2001 – Law Society Conference on Protecting Intellectual Property in Information Technology Assets (chaired conference)
December 6, 2000 Canadian Institute – Structuring IP Licence Agreements
November 15, 2000 Canadian Institute – Privacy Protection in Canada
November 10, 2000 University of Waterloo – Incorporating Privacy into Security Domain
October 31, 2000 Insight – Legal Framework for E-Commerce Transactions
October 26/27, 2000 Fried Frank in New York – Critical Issues for General Counsel: Emerging Issues in Technology Law
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Barry Sookman Lawyer Profile
October 19/20, 2000 IT.Can – From Bricks to Clicks: E-Business, Moderated Panel on International Internet Regulatory Issues
October 11, 2000 Institute for International Research – E-Commerce Law: Implementing Legally Compliance E-Commerce Programs to Mitigate Risk and Reduce Loss
October 4, 2000 Ontario Chapter of Risk & Insurance Management – Cyber-Risk: E-Commerce and Risk Management
September 26, 2000 Institute for International Research – Privacy 2000 Conference – Developing a Privacy Policy for Your Internet Site that Fosters Customer Confidence and Ensures Compliance with Legislation
September 22, 2000 Marsh Canada – Liabilities Arising from Internet and E-Commerce (E-Commerce)
September 7, 2000 University of Toronto Centre for Innovation Law & Policy – E-Commerce Legislation in Canada
June 27, 2000 Canadian Institute – Intellectual Property On-Line
June 2, 2000 Canadian German Association – E-Commerce Law Issues
May 26 2000 McKinsey & Co. – gave speech to McKinsey clients on Turbo Charging Internet Businesses
May 9, 2000 Toronto Computer Lawyers’ Group – Caselaw Update
May 4, 2000 IT/CAN Law Association – Bill C-6, Privacy and Internet Issues
March 31, 2000 - Public Key Infrastructures (PKIs): Practical and Legal Considerations for Maintaining Privacy and Confidentiality in E-Commerce - Netlaw 2000 Conference
March 31, 2000 Canadian Institute – Netlaw Conference – Public Key Infrastructures and E-Commerce
March 22, 2000 INFONEX – Minimizing and Managing Risks Involved in Internet Commerce
March 19, 2000 INFONEX – Bullet-Proofing Your On-Line Business
January 28, 2000 Canadian Bar Association Institute – Developing and Implementing Privacy Policies
January 27, 2000 - Security of Information on the Internet – CBAO
January 27, 2000 Canadian Bar Association Institute – Security of Information in E-Commerce Transactions
December 9, 1999 - Liability Without Leaving Home: The Law of the Internet - The Canadian Institute
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Barry Sookman Lawyer Profile
November 19, 1999 - Knowledge-Based Businesses: The Businesses of the Future - Pitblado Lectures - The Law Society of Manitoba
October 14-15, 1999 - Bill C-54: Sharing Information and Targeting Customers - Insight Second Annual 1999 Advertising Forum
September 13, 1999 - Security and Confidentiality Issues in E-Commerce - The Institute for International Research
June 17, 1999 - Protecting Intellectual Property Rights in E-Commerce - First Joint Canadian IT Law/CLA Conference (Moderator)
April 12, 1999 - Privacy and Security Issues in E-Commerce - Netlaw Conference
March 25, 1999 - Legal Issues Involving E-Commerce and the Internet – CBAO
February 24, 1999 - Information and Data Privacy – E-Commerce in the Year 1999
February 23, 1999 - Legal Issues Related to the Year 2000 - Infonex Conference (Chair)
February 9, 1999 - Information Technology Law Up-Date – gave speech to the Toronto Computer Lawyers’ Group
November 30, 1998 - The Law of E-Commerce, Strategy Institute
November 26, 1998 - E-Commerce, Second Annual Canadian Information Technology Law Conference
November 5, 1998 - Commerce on the Internet: Legal Issues, Paper on Corporate Internet Policies (Chair of Conference)
October 20, 1998 - Copyright and Content Issues on the Web, International Trademark Association Annual Meeting
October 6, 1998 - Contracting for Information Technology, Osgoode Hall Law School
September 24, 1998 - Outsourcing Contracts Conference, Federated Press (Chair)
June 22, 1998 - Intellectual Property in the Digital Universe, Infonex (Chair)
April 18, 1998 - Copyright and the New Digital Agenda, New Developments in Communications Law and Policy: Towards the Millennium, Law Society of Upper Canada
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Barry Sookman Lawyer Profile
March 2, 1998 - Contracting for Information Technology - Outsourcing Agreements, Osgoode Hall Law School Professional Development Program
February 24, 1998 - Expert Purchasing of Information Technology, Federated Press (Chair)
January 29, 1998 - Doing Business Over Global Networks - CBAO Ontario
November 27 and 28, 1997 - co-chaired and organized first Canadian conference of the Information Technology Canada Law Association
September 17, 1997 - Osgoode Hall Law School Continuing Legal Education Programme - Organized and chaired conference on “Doing Business on the Internet”
September 10, 11, and 12, 1997 - ITU Conference Switzerland – “Jurisdiction and the Internet”
June 13, 1997 - Dayton School of Law – “Jurisdiction and the Internet”
June 3, 1997 - Canadian Business Press – “Legal Issues Involved in On-Line Publishing”
April 29, 1997 - Infonex - "Intellectual Property Issues for Business Agreements”
April 24 & 25, 1997 - Computer Law Association Washington - "Legal Developments in Information Technology and Communications in Canada”
March 25, 1997 - Osgoode Hall Law School Continuing Legal Education Program - "Legal Implications of Doing Business over the Internet"
March 7, 1997 - "Legal Issues Related to the Internet" (Canadian Music Week)
January 14, 1997 - Speech to Toronto Computer Lawyers’ Group - "Recent Developments in Information Technology Law”
October 30, 1996 - York University, Osgoode Hall Law School - "Copyright and Information Technology"
April 18, 1996 - Thomson & Thomson Forum - "The Impact of New Technologies on Copyright"
April 9, 1996 - Toronto Computer Lawyers' Group - "Case Law Update"
March 21 & 22, 1996 - National Intellectual Property Law Institute - "Strategic International Issues in Enforcing Copyright Issues in Computer Software"
February 23, 1996 - Moderator Colloquium of ALAI Canada on Multi- Media and Information Highways
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Barry Sookman Lawyer Profile
February 1, 1996 - Canadian Business Press Seminar - "An Editor's Guide to Going On-Line"
June 19 & 20, 1995 - Insight Conference - "The Business of Licensing and Merchandising Legal and Practical Issues for Successful Licensing"
March 29, 1995 - Infonex Conference - "Software and the Electronic Distribution of Information Products"
June 9, 1994 - University of Dayton School of Law Conference on Significant Developments in Computer Law - "An Outsider's View of United States Copyright Protection for Software"
David Crane Lawyer Profile
TITLE OFFICE LAW SCHOOL Partner Vancouver University of British Columbia, LLB, 2001 DIRECT LINE BAR ADMISSIONS 604-643-5891 British Columbia, 2002 E-MAIL [email protected]
Biography David Crane is a partner in the Vancouver office practising in the Business Law Group and Technology & Licensing Industry Group. His practice focuses primarily on technology or technology company-related mergers and acquisitions, financings, business formation, strategic alliances and complex commercial transactions, including outsourcings, telecom services agreements, and IT procurement, implementation and licensing. He also advises clients in a broad range of sectors on strategies and issues relating to technology commercialization, intellectual property, e-commerce, data privacy, anti-spam, and social media.
David’s recent experience includes: ¬ acting for multiple Canadian banks with respect to a multi-billion dollar financial processing services outsourcing; ¬ acting for multiple public sector entities with respect to the replacement of shared IT systems and the outsourcing of application management services; ¬ acting for multiple public sector entities with respect to a $1 billion telecommunications services agreement; ¬ acting for a Canadian bank with respect to $1.25 billion telecommunications services agreement; ¬ acting for various customers with respect to the negotiation of numerous complex IT-related services agreements, including for cloud, systems integration and application management services; ¬ acting for various companies and investors with respect to private equity financings; and ¬ acting on the purchase and sale of numerous private businesses. Earlier in his career, David practiced as in-house counsel for a TSX-listed international technology product development company.
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David Crane Lawyer Profile
David is a frequent speaker at industry and legal conferences, and authors publications on numerous topics, including letters of intent, shareholder agreements, commercial drafting, outsourcing, cloud computing, anti-spam law, cybersecurity and start-up issues.
David received a B.Comm. (Honours with Distinction) from the University of Manitoba in 1997 and his LLB from the University of British Columbia in 2001. He was called to the British Columbia bar in 2002.
Dr. Ron Babin Guest Speaker Profile
Associate Professor
Ted Rogers School of IT Management, Ryerson University
Summary
Dr Ron Babin is an Associate Professor in the Ted Rogers School of IT Management. He joined Ryerson University in 2006 after a 30 year professional career in IT and Management Consulting. Prior to joining Ryerson, Dr Babin was a strategy consultant at Accenture and at KPMG.
His research is focused on global outsourcing of IT and business processes. He examines the social and environmental impacts of global IT outsourcing and has published several books, journal articles and conference papers on this topic. His research on this topic began with his doctoral studies and thesis at the University of Manchester.
Within the industry he maintains his knowledge currency through teaching executive education at the Centre for Outsourcing Research and Education (CORE) and at the International Association of Outsourcing Professionals (IAOP). Finally, Dr Babin is an Adjunct Researcher with the International Data Corporation (IDC), IT Executive Program where he conducts research and writes about Vendor and Sourcing Management strategies.
Dr Babin is a Certified Management Consultant (CMC) and is a Certified Outsourcing Professional (COP). He is an Academic Fellow of the International Council of Management Consulting Institutes (ICMCI).
At Ryerson University Dr Babin is an engaged community member. He is a member of Ryerson Senate, is an executive on the Ryerson Faculty Association and is a member of the Ryerson Pension Committee. At Ryerson he has coached and coordinated several student case competitions, including the Symcor Case Competition, the JDC competition, the Queen’s University ICBC competition and the Simon Fraser University Case IT competition.
Heidi Gordon Lawyer Profile
TITLE OFFICE LAW SCHOOL Associate Toronto Queen’s University, J.D, 2010 BAR ADMISSIONS DIRECT LINE 416-601-8176 Ontario, 2011
E-MAIL [email protected]
Biography Heidi Gordon is an associate in our Business Law Group in Toronto.
Her core practice involves advising on mergers and acquisitions (M&A) and capital markets transactions. She also provides advice to public company clients on corporate governance and ongoing securities law requirements, including continuous disclosure matters.
Ms. Gordon received a BA (Hons.) in Philosophy and Ethics from The University of Western Ontario in 2005, and a JD from Queen's University in 2010. While at Queen’s, Ms. Gordon was on the Dean's List, received the David Sabbath Prize in Corporate Finance and was an associate editor of the Queen's Law Journal.
In 2014, she completed a part-time, six-month secondment with Constellation Software Inc., during which time she advised on matters related primarily to M&A, securities law and corporate governance. In 2015 Ms. Gordon completed a six-month secondment with the Office of Mergers & Acquisitions at the Ontario Securities Commission, during which time she participated in the oversight of a number of M&A transactions and other matters involving public companies, and worked on a number of policy projects in the areas of M&A and shareholder rights, including the changes to Canada’s take-over bid regime, which came into effect in 2016.
Ms. Gordon is the Chief Editor and a regular contributor to the McCarthy Tétrault M&A blog, Canadian M&A Perspectives. She is a past recipient of the Firm’s Mentor of the Year Award and is the current Chair of the Firm’s Toronto Associates Committee. Ms. Gordon also teaches a seminar on public M&A for the advanced securities law programs at the University of Windsor and the University of Western Ontario.
Ms. Gordon was called to the Ontario bar in 2011. She is a member of the Law Society of Upper Canada, the Canadian Bar Association, the Ontario Bar Association and Women in Capital Markets.
Heidi Gordon Lawyer Profile
RECENT M&A TRANSACTIONS
Heidi has recently advised:
Bluesky Hotels and Resorts on its acquisition of InnVest REIT;
Slate Retail REIT in its acquisition of Slate U.S. Opportunity (No.3) Realty Trust;
NVIDIA Corporation in its acquisition of TransGaming Inc.’s game porting group and related technology;
Direct Energy on the sale of its Ontario home services business to EnerCare Inc.;
CIBC on the sale of its Aeroplan credit card portfolio to TD Bank.
RECENT CAPITAL MARKETS TRANSACTIONS
Heidi has recently advised: Slate Office REIT on a bought deal equity public offering (with a secondary offering) for proceeds of $51 million; Summit Industrial Income REIT on bought deal equity public offerings for proceeds of $34 million, $30 million and $28 million; Slate Retail REIT on a bought deal equity public offering for proceeds of $50 million; Constellation Software Inc. on rights offerings of debentures for proceeds of $230 million and $96 million.
Matthew Flynn Lawyer Profile
TITLE OFFICE LAW SCHOOL
Partner Calgary and Toronto University of Ottawa, JD, 1996 DIRECT LINE BAR ADMISSIONS 403-260-3588 416-601-8039 Ontario, 1998 California, 2001 Alberta, 2008 E-MAIL [email protected]
Biography Matthew Flynn is a partner in our Business Law Group. He practices in both Calgary and Toronto focusing on the information technology and energy technology sectors. He has over 16 years’ experience in Canada and California at top-tier firms and in-house (Accenture) focusing on structuring, drafting and negotiating complex technology transactions.
In particular, Matthew regularly advises clients in the areas of cloud computing; technology M&A; cybersecurity, privacy and information management; strategic sourcing (including outsourcing, offshoring, shared services); ERP / Systems implementations; e-commerce; technology and software development, and licensing.
Matthew’s experience in energy technology includes Smart Grid, water remediation; oil sands extraction; carbon credits; and geothermal.
Matthew is listed in the 2014 edition of Best Lawyers in Canada as a leading lawyer in the area of technology.
His relevant experience includes:
¬ Counsel to Freshbooks, a cloud based accounting software service, in connection with its commercial services offering.
¬ Counsel to Garner Distributed Workflow Inc., a cloud based major projects logistics software service, in respect of multiple commercial services agreements with major international energy companies.
¬ Canadian counsel to MarkLogic, the only Enterprise NoSQL database (enabling Big Data - heterogeneous data integration and dynamic content delivery at massive scale).
¬ Counsel to BMW Canada in connection with its technology matters, including in respect of multiple commercial services agreements and licensing of IP.
¬ Counsel to Suncor Energy Inc., in connection with its technology matters, including its $180 million outsourcing initiative for all aspects of its IT requirements.
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Matthew Flynn Lawyer Profile
¬ Counsel to Bank of Montreal in connection with its contracting for an outsourced prepaid cards program.
¬ Counsel to a major North American home improvement retailers in respect of multiple commercial services agreements, including procuring its new e-commerce platform.
¬ Counsel to NeoStream Technologies, an energy focused software and services company, in respect of multiple commercial services agreements with major energy companies, and in respect of its merger with Turbo Decisions.
¬ Canadian counsel to Harris Corporation in connection with its low emissions oil sands extraction technology.
¬ Counsel to a North American retailer of energy and energy services, advising on several trans -border outsourcings, including sending personal information to the UK and US.
¬ Counsel to one of California’s largest utilities in respect of its $1.2B advanced metering infrastructure implementation, including procurement of smart meters, a related communications network, and a back-office meter data management system.
¬ Counsel to one of California’s largest utilities in respect of its licensing and implementation of an ERP system.
¬ Counsel to a leading provider of insurance-related products and services to the Canadian credit union system in respect of multiple commercial services agreements, including the development of online customer SaaS services and mobile applications.
¬ Counsel to a leading North American energy company in connection with its successful dispute resolution against one of the world’s largest ERP system and services providers, alleging licensing non-compliance.
¬ Canadian counsel to an American manufacturer of ultra-rugged mobile phones and provider of related mobile solutions to enterprise businesses, in connection with its successful Canadian commercial launch.
¬ Counsel to a global auto parts manufacturer in connection with the drafting and negotiation of a US$55 million business process outsourcing initiative for certain finance and accounting functions.
¬ Counsel to a global IT service provider in respect of: (i) $80M of outsourced IT infrastructure and AD&M services to Canadian energy company; (ii) a $400M contract with public entity for outsourcing of travel services (call center; online booking tool, travel card, support services) for 300,000+ public employees; (iii) a $100M customer care outsourcing project for a Canadian electric utility.
¬ Canadian counsel to an American multinational provider of speech and imaging software applications in respect of its acquisition of a software company specializing in predictive text.
¬ Counsel to Nissan USA in respect of a major IT outsourcing initiative. ¬ Counsel to a US private equity firm in a series of merger and acquisition agreements.
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Matthew Flynn Lawyer Profile
¬ Counsel to a world leading technology services provider in respect of dozens of technology transactions throughout North America (including IT outsourcings, staff augmentations, and technology consulting services) with major blue chip companies in the financial services, insurance, natural resources, and government industries.
¬ IT counsel to a California private credit risk assessment software company to a major U.S. public company focused on financial market analysis, trading statistics, and related information.
¬ IT counsel representing three separate major California semiconductor chip design software companies (buyer and seller side) in acquisition activities, ranging in size from $10M to U.S. $$250M.
¬ IT counsel representing acquirer in the U.S. $300M merger and acquisition of two California public silicon integrated chip design companies, negotiated and signed in a one-week period.
Matthew received his B.A. (Hons.) from the University of King’s College in 1993, and his J.D. from the University of Ottawa in 1996. He was called to the Ontario bar in 1998. He is also a member of the Law Society of Alberta and the California State Bar.
Matthew is a member of the Canadian Bar Association, the American Bar Association, the International Technology Lawyer’s Association (where he is a member of the e-commerce committee), and ITCan.
Sean Burke Guest Speaker Profile
Chief Operating Officer
FrontFundr
Summary
Sean Burke has over five years of professional service experience working at PricewaterhouseCoopers LLP in corporate tax and audit. He was relocated to New York, where he advised several of the world's largest banks in the banking and capital markets sector. In 2013, he was named the Chartered Accountants Most Exemplary Young Professional, an award given to one CA in Western Canada annually. In 2012, he was awarded the PwC National CEO Award, the highest honour for PwC Canada employees. Sean is active in his community and serves on multiple boards in Vancouver. Most notably, he is on the SFU Board of Governors Responsible Investment Committee, the SFU Alumni Association and he serves as a board member for the Whisky Wisemen not-for-profit organization.
Keith Rose Lawyer Profile
TITLE OFFICE LAW SCHOOL
Associate Toronto University of Ottawa, J.D., 2012 DIRECT LINE BAR ADMISSIONS 416-601-7913 Ontario, 2013 E-MAIL [email protected]
Biography Keith Rose draws on a practical background in the IT business, with more than a decade of prior experience as a software developer and project manager, as well as a deep interest in the interfaces between law and technology in the real world, to identify and resolve legal problems in the technology and communications sectors. Mr. Rose advises clients on a range of technology law issues including privacy and anti-spam compliance, intellectual property, e-commerce, and regulatory issues and acts for clients on a variety of transactions including licensing, procurement, and outsourcing.
RECENT TRANSACTIONS AND ADVICE
Mr. Rose has recently acted for or advised:
¬ A public sector gaming corporation on commercial and data protection issues arising from an outsourcing program, including developing strategies to meet business goals while complying with both public and private sector privacy legislation;
¬ The Canadian branch of a multinational consumer products conglomerate on commercial, privacy and anti-spam compliance issues arising from outsourcing of consumer engagement services and novel social media marketing programs;
¬ A university in drafting and negotiating collaboration agreements for the administration of a government research grant;
¬ A retail chain in developing an anti-spam compliance policy;
¬ A Fintech service provider in relation to various service and data license agreements;
¬ An online accounting services provider in a number of commercial agreements including a reseller agreement for value-added resellers, a data sharing and referral agreement with a business partner, and a domain name service agreement with a service provider;
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Keith Rose Lawyer Profile
¬ A global IT service provider in its RFP responses and contract negotiations in connection with competitive procurements of IT outsourcing services;
¬ A major Canadian financial institution in negotiating a colocation agreement for IT infrastructure;
¬ A major Canadian financial institution, in resolving a licensing dispute with a software vendor;
¬ A variety of clients, including a Canadian engineering services firm and major Canadian financial institutions, in cloud service procurement transactions;
¬ A wide variety of clients, including small businesses, large retail chains, device manufacturers and distributors, and online service providers, in relation to various privacy, e-commerce, and anti-spam compliance matters;
¬ Various user organizations, including a transportation company and an industry association, in relation to the interpretation and application of Canadian copyright tariffs;
¬ Right-holder organizations, in relation to the interpretation and implementation of international IP treaties;
¬ Various content and service providers on telecommunication and broadcasting regulatory matters; and
¬ Various device manufacturers in obtaining Canadian regulatory approval for wireless devices.
Mr. Rose received his B.Sc. (with Hons.) from the McGill University in 1993 and his M.Sc. from Queen’s University in 1997, both in Physics. Prior to entering law school, he worked in the field of software and systems development, specializing in ground control systems for communications satellites. He received his JD, with an option in Law and Technology, from the University of Ottawa Law School in 2012. While at law school, Mr. Rose was awarded the University Silver Medal as well as numerous individual course prizes including the McCarthy Tétrault LLP Technology Law Award and the Beament Green prize in Advocacy.
Mr. Rose was called to the Ontario Bar in 2013. He is a member of the Law Society of Upper Canada, the International Association of Privacy Professionals, IT.Can, the Toronto Computer Lawyers Group, the Canadian Bar Association, and the Ontario Bar Association.
RECENT PAPERS AND PUBLICATIONS
¬ “Canadian Trade-Mark Law Adapts to Online Software Licence Sales”, (2015-16), 17.2 Internet and E- Commerce Law in Canada 9, with Julia L. Johnson, David Tait, Partner, and Daniel G.C. Glover
¬ User’s Guide to Canadian Copyright Tariffs, 2d ed (Toronto: McCarthy Tétrault LLP, 2016), co- authored with Peter S. Grant, Grant Buchanan, and Daniel G.C. Glover
¬ “Online Trust Alliance Issues Revised Draft ‘Trust Framework’ for the Internet of Things”, (January 2016), 13.2 Canadian Privacy Law Review 14
¬ User’s Guide to Canadian Copyright Tariffs, 1st ed (Toronto: McCarthy Tétrault LLP, 2015), co- authored with Peter S. Grant, Grant Buchanan, and Daniel G.C. Glover
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Keith Rose Lawyer Profile
¬ “Copyright and Industrial Design Developments – 2013”, co-written with Glen Bloom, Barry Sookman, John Cotter, Barry Fong, Martin Brandsma and Vanessa Cotric, presented at Law Society of Upper Canada: 18th Annual Intellectual Property Law: The Year in Review, January 16, 2014
¬ “Protection from the Protectors: Does the Competition Act Provide an Answer to the Misuse of Technological Protection Measures?” (2013) 11:1 Canadian Journal of Law and Technology 117
George S. Takach Lawyer Profile
TITLE OFFICE LAW SCHOOL
Partner Toronto University of Toronto, JD DIRECT LINE BAR ADMISSIONS 416-601-7662 Ontario E-MAIL [email protected]
Biography George S. Takach is a senior partner in the firm’s Toronto office. George brings significant value to clients in their tech company M&A/financing deals, their sophisticated tech licensing, IT procurement and other tech commercial transactions, and their more challenging e-commerce activities, including projects involving privacy law, cloud computing, big data and social media.
McCarthy Tétrault is Canada’s pre-eminent firm for technology law. Since its inception in 1997, the Canadian Legal Lexpert Directory has found McCarthy Tétrault to have the strongest computer and information technology law practice in Canada. In the 2016 edition of Chambers Global, McCarthy Tétrault is listed in Band 1 for Information Technology.
George’s deep experience in tech M&A/financing allows his clients to get deals done more quickly and cost effectively. Past deals where he has brought his value-added skill set to clients include: IPO and multiple acquisition transactions for Constellation Software Inc.; multiple acquisition transactions for Aastra Technologies Inc., including purchase of Telepo, and purchases from Ericsson, Nortel, EADS, DeTeWe and Ascom; merger transaction between Aastra and Mitel; multiple sale transactions acting for private Canadian technology companies being sold to multi- national public tech companies, including: PriceMetrix to McKinsey & Company; Intelliresponse Systems, Inc. to 24-7 Customer, Inc.; CPAS Systems to Xerox; Kobo Inc. to Rakuten Inc.; Kanetix Ltd. to Monitor Clipper Partners; Opalis Software to Microsoft; Cybermation Inc. to CA Inc.; Chantry Networks to Siemens; InSystems to Standard Register; and Jewelstone Systems to AGF; multiple acquisition transactions acting for Canadian, American and European acquirers of Canadian or other technology companies, including: Techwyse acquiring Spark Internet Marketing Corporation; Solidifi acquiring Linear Title & Closing Limited; Euronet Worldwide Inc. acquiring XE.com Corporation;
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George S. Takach Lawyer Profile
Hitachi acquiring Ideaca; acquisition by Kobo of Aquafades; Rockwell Automation acquiring Rutter Hinz; Exact Software acquiring Longview Solutions; venture and related-type financings of earlier stage Canadian tech companies, including League, Inc. (OMERS Ventures; Real Ventures); Kobo Inc., Fresco Microchip (Celtic House, Ventures West); CPAS Systems (Tier Technologies); Cube Route (CIBC); a range of other M&A/financing transactions involving technology companies and tech-related assets, including the sale by Scotiabank of its fixed income indices business to TSX Group.
In the area of sophisticated tech licensing, IT procurement and other tech commercial deals, George’s creativity and broad experience allows clients to resolve difficult issues more quickly and to get the relationship off on the right foot. In the tech commercial area, George has a national practice with the following illustrative clients whom he has assisted with a broad range of agreements: a Montréal-based bank; a Calgary-based energy company; a Canadian-based, global life sciences company; a Toronto-based retailer; three Toronto-based banks; a Montréal-based communications company; a Toronto-based public sector agency; and a public sector consortium with members in BC, Alberta, Ontario and Quebec. George helps clients craft sensible and workable solutions to complex e-commerce-related legal and compliance challenges, including in the privacy law space. He brings a steady and experienced hand to bear on the invariably unprecedented legal issues generated by novel e-commerce business processes. In the e- commerce/Internet law area, his extensive practice includes: advising companies on how to create legally compliant online customer experiences, including enforceable “click consent agreements,” workable electronic voting processes, etc.; advising governments on law reform initiatives aimed at facilitating e-commerce; helping organizations comply with privacy and data protection laws, and advising clients experiencing a data breach; and crafting and negotiating co-branding, Web-linking and other e-commerce-related agreements. George regularly writes articles on the subject of computer and tech law in Lexpert Magazine’s Canadian edition. Below is a list of his most recently published articles in the magazine: “The Cloud Contract According to IBM.” Lexpert Magazine, April 2015 “Lessons from the Bluenose II Restoration Project.” Lexpert Magazine, May 2015 “The Game of Drones, Part 1.” Lexpert Magazine, June 2015 “The Game of Drones, Part 2.” Lexpert Magazine, July/August 2015 “The Ascent of Mobile.” Lexpert Magazine, September 2015 “Tech Break Up are Hard to Do.” Lexpert Magazine, October 2015 “Legal Considerations for Data Breach Preparedness, Part 1.” Lexpert Magazine, November/December 2016 “Legal Considerations for Data Breach Preparedness, Part 2.” Lexpert Magazine, January 2016.
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George S. Takach Lawyer Profile
“Legal Considerations for Data Breach Preparedness, Part 2.” Lexpert Magazine, February 2016. “The TPP and Tech, Part 1.” Lexpert Magazine, March 2016. “The TPP and Tech, Part 2.” Lexpert Magazine, April 2016. “The TPP and Intellectual Property, Part 3.” Lexpert Magazine, May 2016 “Technology and the Future of Lawyers, Part 1.” Lexpert Magazine, June 2016 “Technology and the Future of Lawyers, Part 2.” Lexpert Magazine, July/August 2016 “Digital Currencies and P2P Blockchain Ledgers, Part 1.” Lexpert Magazine, September 2016 “The Legalities of Digital Currencies and Blockchain, Part 2.” Lexpert Magazine, October 2016 “Ransomware, Cybercrime’s Latest Tactic.” Lexpert Magazine, November/December 2016 “Happy Innovation Birthday Canada.” Lexpert Magazine, January 2017 “Board/Public Agency Oversight of the New Technologies.” Lexpert Magazine, February 2017 “E-Kiosk Contracts.” Lexpert Magazine, March 2017 George is the author of three books: Computer Law, second edition; The Software Business, second edition; and Contracting for Computers, fourth edition. For 20 years he was an Adjunct Professor at Osgoode Hall Law School, York University, where he taught an evening course in Computer Law. George is in demand as a speaker to legal and technology industry audiences and a regular writer on legal technology topics.
George is listed in the 2016 edition of Chambers Global: The World’s Leading Lawyers for Business and in the 2017 edition of Chambers Canada: Canada's Leading Lawyers for Business as the only “Eminent Practitioner” in the area of information technology for Canada. Since its inception (and most recently in 2016), George has appeared in the Lexpert/The American Lawyer Guide to the Leading 500 Lawyers in Canada, as a leading lawyer in the areas of technology and corporate mid-market. George is recognized in The Best Lawyers in Canada as a leading lawyer in information technology law and technology law. Best Lawyers also named George the 2017 Information Technology Law “Lawyer of the Year” in Toronto. He is also listed as a leading lawyer in the area of telecommunications, media and technology in the current editions of Who's Who Legal: Canada and The Legal 500 – Canada. Since its inception in 1997, he has been listed in the Canadian Legal Lexpert Directory, a guide to the leading law firms and practitioners in Canada, as a leading lawyer in the areas of technology and computer & IT law.
George received his BA and his JD (Dean’s Honour List) from the University of Toronto. He also has his MA in international relations from the Norman Paterson School of International Affairs, Carleton University in Ottawa. He was called to the Ontario bar in 1985. George has been on the Board of, and continues to raise money for, Lake Scugog Camp, an organization serving underprivileged and “at risk” children/youth and their families (a camp that George attended when he was a child).
Ryan Prescott Lawyer Profile
TITLE OFFICE LAW SCHOOL Counsel Toronto Osgoode Hall Law School
DIRECT LINE BAR ADMISSIONS 416-601-8107 Ontario, 2010
E-MAIL [email protected]
Biography Ryan Prescott is counsel in our Technology Law Group in Toronto. He has a general corporate and commercial practice with a focus on technology industries. He advises clients on intellectual property, privacy, and technology law issues, and acts for clients on complex and strategic commercial licensing, procurement and outsourcing transactions.
Mr. Prescott has recently represented: ¬ a statutory corporation in the procurement of key infrastructure computing services; ¬ a large software provider on its inbound licensing of strategic product technology; ¬ a public sector consortium of regulators in the procurement of computing services in respect of their core national systems; ¬ a corporation jointly owned by several provincial commissions in connection with outsourced business process services; ¬ a financial institution in their procurement of a cloud-based storage solution; ¬ a major Canadian online service company in their acquisition of a foreign technology company; ¬ a financial institution in their procurement of a cloud-based productivity software solution; ¬ a service provider to provincial governments in their expansion within Canada; ¬ a financial institution in the outsourcing of their operating portfolio and client relationship management system; ¬ a private Canadian technology company that was acquired by a multi-national public technology company; ¬ a major Canadian online services company in the outsourcing of their applications development; and ¬ a major Canadian online services company in the procurement of core backend hardware.
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Ryan Prescott Lawyer Profile
Mr. Prescott received his B.Math (Hons.) in Computer Science from the University of Waterloo in 2006, graduating with distinction. He received his JD from Osgoode Hall Law School in 2009 and was called to the Ontario bar in 2010.
Mr. Prescott is a member of the Law Society of Upper Canada, the Ontario Bar Association, and the Canadian Bar Association.
Daniel Glover Lawyer Profile
TITLE OFFICE LAW SCHOOL
Partner Toronto University of Toronto, JD Honours, 2005 DIRECT LINE BAR ADMISSIONS 416-601-8069 Ontario, 2006 E-MAIL [email protected]
Biography Daniel Glover is a partner in our Intellectual Property Group and a member of our Privacy, Technology, Consumer Products & Retail Group, Franchise & Distribution, and Appellate Groups. His practice focuses on intellectual property management, acquisition, and protection, including by way of litigation, and on privacy, anti-spam and marketing compliance.
Mr. Glover has significant experience in information and media law, including Internet law, copyright and trade- mark protection, and data protection and marketing compliance. He has advised numerous clients in the technology, retail, financial services, and health services fields on privacy and anti-spam compliance issues, including with respect to compliance with CASL and the Unsolicited Telecommunications Rules, in reaction to data breaches, and with domestic and international obligations attaching to the storage of information in the cloud.
Mr. Glover was named a “rising star” in the enforcement and litigation category in the World Trademark Review 1000 for 2014, 2015 and 2016, with one firm client stating that he “is just brilliant. He is very very sharp and is exceptionally conscientious, smart, courteous and very funny too”.
Mr. Glover has represented clients in complex matters before the Supreme Court of Canada, the Federal Court of Appeal, the Federal Court, the British Columbia Court of Appeal, and the Copyright Board of Canada and has won victories in trade-mark matters before the Federal Court and the Trade-marks Opposition Board. He was counsel in successful appeals at the Supreme Court of Canada in two leading copyright cases in 2012, appeared at the Supreme Court again in 2013 and 2015 in important appeals on the test for copyright infringement and the application of copyright law to new technologies. He is counsel on another Supreme Court appeal relating to the power of courts to issue enforcement orders against search engines to stem infringement of intellectual property rights. Four of these cases were named in Lexpert’s annual “Top 10 cases” (for 2012, 2014 and 2015), and another was named a Managing IP Milestone Case of the Year for 2016. Mr. Glover also led the drafting of an amicus brief on international copyright law standards at the Supreme Court of the United States in 2014.
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Daniel Glover Lawyer Profile
A selection of cases in which Mr. Glover was counsel includes: American Broadcasting Companies, Inc., et al. v. Aereo, Inc., fka Bamboom Labs, Inc, 134 S. Ct. 2498 (Supreme Court of the United States, 2014) Equustek Solutions Inc. v. Google Inc., Supreme Court docket no. 36602 (appeal heard December 6, 2016 by the Supreme Court of Canada); 2015 BCCA 265 (British Columbia Court of Appeal) Canadian Broadcasting Corp. v. SODRAC 2003 Inc., 2015 SCC 57 (Supreme Court of Canada) Cinar Corporation v. Robinson, 2013 SCC 73 (Supreme Court of Canada) Reference re Broadcasting Regulatory Policy CRTC 2010-167 and Broadcasting Order CRTC 2010-168, 2012 SCC 68 (Supreme Court of Canada) ESA v. SOCAN, 2012 SCC 34 (Supreme Court of Canada) Alberta v. Canadian Copyright Licensing Agency, 2012 SCC 37 (Supreme Court of Canada) Sirius Canada Inc. v. CMRRA/SODRAC Inc. 2010 FCA 348 (Federal Court of Appeal) Columbia Pictures Industries v. Wang, 2007 SKCA 133 (Sask. C.A.) Maple Leaf Foods Inc. v. Consorzio del Prosciutto di Parma, 2010 FCA 247 (Federal Court of Appeal) CEG License Inc. v. Joey Tomato’s (Canada) Inc., 2012 FC 1541 (Federal Court) Matol Biotech Laboratories Ltd. v. Jurak Holdings Ltd., 2008 FC 1082 (Federal Court) Canadian Wireless Telecommunications Assn. v. Society of Composers, Authors and Music Publishers of Canada, 2008 FCA 6 (Federal Court of Appeal) Omega SA v. Iwatsu Electric Co. (2011), 95 C.P.R. (4th) 78 (T.M.O.B.) Certiwood Technical Centre v Cedar Shake & Shingle Bureau, 2012 TMOB 207 Mr. Glover has acted for a wide range of clients, including Internet service providers and content hosts, media companies and industry organizations (film, television, music, gaming, and publishing), banks, insurers and financial services companies, health services providers, retailers, franchisors, distributors, and software, electronics and technology manufacturers.
Mr. Glover is an adjunct professor in intellectual property law at the Osgoode Hall Law School at York University and a co-author of the texts Intellectual Property Law in Canada: Cases and Commentary (Carswell), Global Privacy and Security Law Reference (Aspen Publishers), and the User's Guide to Canadian Copyright Tariffs (McCarthy Tétrault). He was called upon to testify as an expert on the operations of the Copyright Board before the Senate Committee on Banking, Trade and Commerce.
Mr. Glover is past chair of the Copyright Policy Committee of the Intellectual Property Institute of Canada (IPIC), sat on the Canadian Working Committee for the Association Internationale Pour la Protection de la Propriété Intellectuelle (AIPPI), and is a member of the International Trademark Association (INTA) and the Association Littéraire & Artistique Internationale (ALAI). He has presented on intellectual property issues at numerous conferences, including for Insight, the Ontario Bar Association, the Law Society of Upper Canada, and the 40th annual conference of the Canadian Conference on International Law on intellectual property and the Internet.
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Daniel Glover Lawyer Profile
Mr. Glover clerked at the Court of Appeal for Ontario. He received his JD (Honours) from the University of Toronto, where he concentrated on intellectual property and won the Gowlings Prize in Law and Information Technology, the Honourable Jerry S. Grafstein, QC Prize in Communications Law, the A. Alan Borovoy Prize in Civil Liberties, the Patricia Julia Myhal Scholarship in Legal Writing, and the Lang Michener Prize in Property.
Prior to entering law school, Mr. Glover was an editor and writer for the National Post and an editor for the Frommer’s and Let’s Go travel guide series.
Mr. Glover received his MA from the University of Toronto in 1996 and his AB (magna cum laude) from Harvard University in 1994, where he was elected to Phi Beta Kappa and won numerous awards, including the Thomas T. Hoopes Prize, the LeBaron Russell Briggs Traveling Fellowship and the John Harvard Scholarship. He was called to the Ontario bar in 2006 and is a registered trade-mark agent.
Naseem Malik Lawyer Profile
TITLE OFFICE LAW SCHOOL
Counsel Toronto University of Saskatchewan, LLB, DIRECT LINE 1994 416-601-8218 BAR ADMISSIONS E-MAIL Ontario, 1996 [email protected]
Biography Naseem Malik is counsel in the firm’s Labour & Employment Group in Toronto. He is certified as a Specialist by the Law Society of Upper Canada in the areas of Citizenship & Immigration Law and Immigration. His practice focuses on business immigration law.
Previously, Mr. Malik was employed by the Department of Citizenship and Immigration. He worked as an Immigration Examining Officer at Pearson International Airport. Mr. Malik assists his clients, which range from large multinational corporations, financial institutions, industrial and high-tech companies to musicians and entertainment groups, in order to facilitate their entry into Canada for business-related purposes.
From 2005-2007, Mr. Malik was a member of the OBA Immigration and Citizenship subsections’ Executive, and has been recognized by Lexpert since 2003 as having a significant practice in the field of business immigration. He is recognized by Who's Who Legal as an leading practitioner in Corporate Immigration Law, and was a featured speaker at the Canadian Bar Association's Annual Citizenship and Immigration Conference in May 2014.
Mr. Malik received his BA (Psychology) in 1991 from the University of Saskatchewan and his LLB from the University of Saskatchewan Law School. Mr. Malik was called to the Ontario bar in 1996.
He is a member of the Law Society of Upper Canada and the Citizenship and Immigration section of the Canadian Bar Association.
REPRESENTATIVE WORK
¬ Temporary Resident Visas for persons who require such visas prior to entering Canada;
¬ Work Permit applications pursuant to the North American Free Trade Agreement (NAFTA), General Agreement on Trade and Services (GATS) and the Immigration and Refugee Protection Act;
¬ Service Canada positive labour market opinion applications;
¬ Permanent Residence applications;
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Naseem Malik Lawyer Profile
¬ Citizenship applications;
¬ Study Permit applications;
¬ Extension applications for work permits, study permits and visitor records;
¬ Obtaining permission for the spouse of a temporary foreign worker to obtain a work permit permitting them to work in Canada;
¬ Temporary Resident Permits/Rehabilitation applications relating to criminal inadmissibility;
¬ Analyzing Criminal Code provisions and foreign statutes to assess whether a person is inadmissible to Canada based on prior criminal convictions; and
¬ Analyzing and dealing with medical inadmissibility issues.
In addition to his legal skills, Mr. Malik also provides practical advice relating to logistical issues that arise when foreign nationals travel to Canada for business purposes.
CONFERENCES AND ARTICLES
¬ Speaker, 6th Annual Canada/America Border Immigration Conference in Buffalo, New York, the American Immigration Lawyers Association and the Ontario Bar Association, Buffalo New York, October 2014.
¬ Speaker, McCarthy Tétrault Labour and Employment Law Client Conference in Toronto on the topic of business immigration in 2002, 2003, and from 2005 to 2011.
¬ Speaker, Canadian Bar Association's Annual Conference in Montréal on immigration-related issues, May 2003.
¬ Author, immigration-related articles published in Law Times, 2004 and 2005; and Lawyers Weekly, 2004, 2005, 2007.
¬ Featured Contributor, corporate immigration article in Canadian Lawyer magazine, 2008.
¬ Panelist, Employing Foreign Workers Conference, The Canadian Institute, 2012.
¬ Quoted extensively in a business immigration article in Law Times, 2010.
¬ Author, immigration related article in the OBA's Citizenship and Immigration Section's newsletter, 2012.
¬ Contributor, cross-border manual on immigration and customs issues for Carswell, 2003.
¬ Seminar Leader, one-day intensive course on business immigration, the Law Society of Upper Canada, 2005.
¬ Participant, "Mastering Immigration Applications for Foreign Workers", the Canadian Institute, 2008.
¬ Featured Speaker, Ontario Bar Association's Institute CLE, 2009 and 2010.
Fazila Seker Guest Speaker Profile
Director, Technology & Venture Development
MaRS Innovation
Summary
As director, technology & venture development for the physical sciences, Fazila develops strategies for bridging emerging technologies to market and monetizing assets, assesses the business potential, and project manages their commercial implementation with a focus on medical imaging and healthcare markets.
She brings ten years of experience leading technology development and commercialization for GE and Xerox in electronic devices, systems and related materials. Prior to joining MI, Fazila advised a leading Canadian venture capital firm in structuring a new high-tech fund. She has served as invited reviewer and panelist for leading professional organizations in the U.S. and Canada, including the U.S. National Science Foundation and Ontario Society for Excellence in Technology Transfer.
Fazila holds a Ph.D. in Chemistry from the University of Wisconsin-Madison and a B.Sc. in Chemical Physics from the University of Toronto.
Pavan Jawanda Lawyer Profile
TITLE OFFICE LAW SCHOOL Partner Vancouver University of British Columbia, LLB, 2008 DIRECT LINE BAR ADMISSIONS 604-643-7110 British Columbia, 2014 E-MAIL New York, USA, 2009 [email protected]
Biography Pavan Jawanda is a partner in our Business Law Group in Vancouver. His practice is primarily focused on advising public and private companies on domestic and international mergers and acquisitions, capital markets, corporate finance, venture capital and other corporate and commercial transactions. He also regularly advises on securities regulatory compliance, corporate governance, start-up matters and other general corporate matters and represents clients in various industries, including technology, financial services, consumer products, natural resources, energy and manufacturing.
Prior to joining McCarthy Tétrault, Pavan was a senior associate with Davis Polk & Wardwell LLP, one of New York’s leading international law firms, where he was based in its New York office from 2008 to 2012 and in its Hong Kong office from 2012 to 2014. He is also a Certified Public Accountant and was previously an auditor with KPMG LLP.
Pavan’s experience includes: ¬ advising Canadian, U.S. and international acquirers, targets and financial advisors on mergers and acquisitions, including public, private and cross-border M&A, private equity transactions and leveraged buyouts; ¬ advising issuers and underwriters on domestic, U.S. and cross-border securities offerings of equity and debt, including initial public offerings, secondary and follow-on offerings, private placements, acquisition financings, high-yield debt offerings and tender offers; ¬ advising on venture capital financings and start-up matters for technology companies; and ¬ advising on inbound and outbound financial and strategic investments and joint ventures. Pavan has advised on corporate transactions originating in over 20 countries across a number of continents, with a particular focus on Canada, the U.S., China, India and other parts of Asia. Landmark transactions he has
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Pavan Jawanda Lawyer Profile previously advised on have included the largest ever registered equity offering by a U.S. utility company (selected "2010 Americas Equity Issue of the Year" by International Financing Review), the largest ever equity offering by a U.S. oil and gas exploration and production company, the largest ever acquisition of a Canadian e-commerce company, one of the largest ever private equity acquisitions in India and one of the largest ever leveraged buyouts in the Philippines.
Pavan received his BBA from Simon Fraser University in 2003 and his LLB from the University of British Columbia in 2008, where he was the recipient of a number of awards including the Blakes Scholar Award, Law Foundation of BC Award, Peter Howard Memorial Award, Law Foundation of BC Scholarship, Graduating Class of Law ‘53 Scholarship and prizes in corporate law, corporate and real estate transactions and torts. He is called to the bars of British Columbia and New York. He is a member of the Canadian Bar Association, the Law Society of British Columbia, the American Bar Association, the New York State Bar Association and the American Institute of Certified Public Accountants. He is a committee member of the Mergers & Acquisitions and Private Equity and Venture Capital committees of the American Bar Association. Pavan is also an adjunct instructor at Kwantlen Polytechnic University where he teaches business law, has been a co-author of a number of articles in the area of securities law for the Practising Law Institute, has been a national presenter in the area of corporate finance for lawyers for the Canadian Bar Association and sits on the board of directors of The Learning Disabilities Association of Vancouver.
Véronique Wattiez Larose Lawyer Profile
TITLE OFFICE LAW SCHOOL
Partner Montréal Université de Montréal, LLB, 1996 DIRECT LINE BAR ADMISSIONS 514-397-4249 Québec, 1999 E-MAIL [email protected]
Biography Véronique Wattiez Larose is a partner in our Business Law Group in Montréal. Ms. Wattiez Larose’s practice focuses on mergers and acquisitions, private equity (including venture capital) and ongoing business matters, primarily for technology clients. She is also a Canadian Registered Trade-mark Agent.
Ms. Wattiez Larose represents clients in a wide variety of areas, including biotechnology and pharmaceuticals, video games and computer software, the music industry, the clothing industry and aeronautics. She also provides advice on all commercial aspects of intellectual property law, including the drafting and negotiation of technology transfer agreements, intellectual property due diligence and strategic intellectual property portfolio management. Ms. Wattiez Larose also assists her client with setting up distributorships.
Ms. Wattiez Larose has been recognized in the current edition of the Canadian Legal Lexpert Directory as a «consistently recommended» practitioner in the area of technology transactions law and as a «repeatedly recommended» practitioner in the areas of Biotechnology, Computer & IT law, Corporate Commercial Law and Private Equity.
Recently, Ms. Wattiez Larose acted as legal advisor to the following corporations and institutions:
¬ Medicago Inc. in the negotiation of licensing agreements with Philip Morris International;
¬ CO2 Solutions Inc. in the negotiation of various joint development and collaboration agreements;
¬ Guavus, Inc. in the acquisition of Neuralitic Systems Inc.;
¬ Caprion Proteomics Inc. in its acquisition by Chicago Growth Partners;
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Véronique Wattiez Larose Lawyer Profile
¬ Fonds de solidarité des travailleurs du Québec (F.T.Q.) in their investment in CT-Paiement Inc. and 7G Entertainment Inc.;
¬ McGill University in the negotiation of licensing agreements with AmorChem Holdings Inc. and agreements with Génome Québec for the operation of the McGill University and Génome Québec Innovation Centre;
¬ Bell Mobility in the acquisition of Virgin Mobile Canada;
¬ Cellfish Media in the acquisition of Airborne Mobile Inc.;
¬ Tandem Expansion Fund in the financing of Solace Systems Inc., Acquisio Inc., Coveo Solutions Inc. and Beyond the Rack Enterprises Inc.;
¬ Textron Inc. in its acquisition of Mechtronix Inc.;
¬ Barco Inc. in its acquisition of X20 Media Inc;.
¬ IMI plc in its acquisition of Mécanique Analytique Inc.
Ms. Wattiez Larose is a member of the Intellectual Property Institute of Canada and sits on the board of directors of Réseau Capital and on the management committee of the Université de Montréal L.R. Wilson Chair in Information Technologies and E-Commerce Law. She is also the firm’s representative and coordinator of the business development working group of the Justicia project of the Québec Bar for the retention of women in private practice.
Ms. Wattiez Larose was assigned to a secondment with two of the firm’s biggest clients, a venture capital institutional investor and a contract manufacturing and pharmaceuticals company.
Ms. Wattiez Larose received her LLB in 1996 from the Université de Montréal and later pursued graduate studies with the Institute for Comparative Law at McGill University. She was called to the Québec bar in 1999.
Jason Panzer Guest Speaker Profile
Chief Operating Officer & Chief Compliance Officer
Marlin & Associates
Summary
Jason Panzer is Marlin & Associates’ Chief Operating Officer, Chief Compliance Officer and the leader of many of the firm’s transaction assignments. He has 18 years of experience in global mergers, acquisitions, divestitures and financing.
Since joining the firm in 2008, Jason has been a key strategic leader and financial advisor to a range of domestic and international companies in the technology and financial sectors. Notable transactions include: secured a $52M investment for New York-based SR Labs from Insight Venture Partners; led the sale of Knovel, the New York-based search engine for the science and engineering community to Reed Elsevier; led the sale of Florida-based DMLT LLC (dba Investment Café), an investor reporting and communication solution to eFront, portfolio company of Francisco Partners; led the sale of Deutsche Börse’s majority interest in reference data provider Avox to DTCC; led the sale of Smarts, Australia-based provider of market surveillance technology to Nasdaq; led the sale of UK-based real-time data provider Tenfore Systems to Morningstar; advised Standard & Poor’s on their divestiture of Vista Research to Guidepoint Global; and advised NYSE Euronext on their divestiture of Hugin Group to Thomson Reuters.
Jason began his career in the Mergers and Acquisitions group at leading global law firm Skadden, Arps, Slate, Meagher and Flom, LLP, where he worked on dozens of transactions, including public and private mergers, stock/asset acquisitions, tender offers, LBOs and private equity investments. Some notable deals include the bailout of Long-Term Capital Management; the Citigroup/Travelers merger; and LBOs with top private-equity firms including KKR and Soros.
Later, Jason spent 3 years in Paris and New York as the Chief Financial Officer of JCF Group, a French-based provider of portfolio analytics, global earnings-estimates and other financial data. In 2004, Jason helped to manage the sale of JCF to FactSet Research Systems Inc. (NYSE:FDS). After helping to integrate the two firms, Jason became FactSet’s Vice President for Business Development and successfully managed the acquisition and integration of three other businesses.
Jason earned his MBA from Columbia Business School, his Law Degree from Fordham Law School and is a CFA charterholder. He is a registered securities principal and holds series 24, 62, and 63.
In his spare time, Jason is an avid cyclist, marathoner and ironman triathlete.
Tom Selby Guest Speaker Profile
Partner
Marlin & Associates
Summary
Tom Selby is a native of Canada and is based in Toronto. He spent the first 14 years of his career in the information technology arena in a variety of technical / operating roles and as an entrepreneur, sales and marketing roles, and, for the past six years, in transaction advisory roles for SunGard.
Tom began his career as a software developer with TD Bank, before establishing his own business, which was based around a unique alphabetic telephone that Tom developed for online retail stock trading. Tom sold his business to a Canadian brokerage-software business and joined the firm as VP of Sales & Marketing. With Tom leading the sales effort, the company grew quickly, and eventually was sold to SunGard, where he rose to become Vice President of Business Development for SunGard's North American Financial Services unit. While at SunGard, Tom helped his division acquire firms in verticals such as: brokerage, trading, wealth, insurance, consulting, and benefit administration.
Tom is an engineer by training, having graduated from University of Toronto with a Bachelors of Applied Science in Industrial Engineering. Now, he is complementing his technical background with the pursuit of the CFA. He has a keen eye for, and an appreciation of, information technology solutions. His technical background, transaction experience, financial skills, and his professional experience give Tom an unusual amount of insight that makes him a valued counsel to M&A's clients. He is a registered securities representative and holds series 7 and 63 licenses.
Tom has three young children including twins. In his little spare time, he enjoys his weekly game of hockey and pursuing his private pilot's license.
Your Technology Law Resource Leading the Way in the Canadian Market
At McCarthy Tétrault, our legal teams understand the nuances of IT law in relation to different industries, and are tailored specifically to our clients’ specialized needs. We have the breadth of experience, having worked with multinationals, technology start-ups and outsourced businesses, on everything from first round financings to IPOs.
Our success is directly linked to our clients’ success and satisfaction. We follow defined processes to deliver exceptional quality and value. We focus on our clients’ objectives and expectations, and configure our resources to address the unique requirement of each situation to provide cost-effective and practical solutions in addition to leveraging our vast body of recent, well-crafted precedents developed through our deep sense of market trends. We follow through to achieve the goals set out by our clients to deliver a better experience and better results. How We Can Help
McCarthy Tétrault is the premiere choice for technology law, offering national presence, with local expertise in:
− Canadian inbound US and international financing transactions and tech M&A − Business process and information technology outsourcing service agreements and e- commerce matters − Technology licensing, distribution and alliance agreements − Global rollouts for Canadian technology companies − Intellectual property rights protection, registration and licensing − Protection of personal information in the public and private sectors − IT system development and integration projects We regularly advise on the most complex transactions and cases involving Canadian and foreign interests.
Reputation for Excellence
− Band 1 for Information Technology expertise – Chambers Global, Chambers Canada − Only firm ranked in Tier 1 for Technology, Media, and Telecoms expertise – Legal 500 − Recognized for leading expertise in Computer & IT Law in each Vancouver, Toronto and Montreal – Canadian Legal Lexpert Directory − Recognized for leading expertise in Technology Transactions in each Vancouver, Toronto, Montreal, and Quebec City – Canadian Legal Lexpert Directory
Contact Us
VANCOUVER CALGARY TORONTO Matthew D. Peters Catherine M. Samuel George S. Takach [email protected] [email protected] [email protected]
MONTRÉAL QUÉBEC CITY Charles S. Morgan François Amyot [email protected] [email protected]
McCarthy Tétrault LLP
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Some Recent Client Success Stories
TECH M&A
TrueBlue Inc. Navtech Synopsys Counsel to TrueBlue in acquisition of Counsel to Navtech in its acquisition Counsel to Synopsys on its acquisition recruitment process outsourcing by Airbus Group of Protecode business unit of Aon Hewitt
Blackridge Corp. ActiveState Bambora Group Counsel to Blackridge in its acquisition Counsel to ActiveState in its Counsel to Bambora in its acquisition by Planet Labs acquisition of the Stackato business of Beanstream from Digital River from Hewlett Packard
Tableau Core Avionics CGI Counsel to Tableau in its acquisition of Counsel to Core Avionics in its Counsel for CGI in its acquisition of Infoactive purchase of assets of ALT Software Solutions Only Financial Technologies Inc.
Carmanah Technologies Euronet Worldwide Synopsis Counsel to Carmanah Technologies in Counsel to Euronet in its acquisition of Counsel to Synopsis in its acquisition its acquisition of the Sabik Group of XE Corporation of Elliptic Technologies Inc. Companies
NVIDIA Hit Technologies Orbcomm Counsel to NVIDIA in its acquisition of Counsel to Hit Technologies in its Counsel to Orbcomm in its acquisition Transgaming’s cross platform merger with Friday Capital Inc. of Skywave Mobile Communications portability technology
Slyce Inc. NYX Gaming Group Limited IntelliCentrics Solution inc Counsel to Slyce in its acquisition of Counsel to NYX Gaming Group in its Counsel to IntelliCentric Solution in its BuyCode Inc., the Israeli developer of acquisition of Ongame Network acquisition of certain assets of the Pounce shopping app Limited from Amaya Gaming Group Vendorlink.ca Ltd
GSO Capital Partners Publicis Groupe hyperWALLET Systems Counsel to the underwriters and GSO Counsel to Publicis Groupe in its Counsel to hyperWallet Systems in its Capital in the acquisition of Rational acquisition of Nurun from Québecor sale to Primus Capital Group, owner of PokerStars and Full Média Tilt Poker, by Amaya Gaming
BCE Inc. Pure Technologies GE Healthcare Counsel to BCE in its sale of Astral Counsel to Pure Technologies in its Counsel to GE Healthcare in purchase Media’s 50% share of the Teletoon, acquisition of Canadian and US assets of CHCA Computer Systems Historia and Séries+ TV speciality of Hunter McDonnell Pipeline Services services and two Astral radio stations Inc. and its subsidiaries in Ottawa to Corus Entertainment Inc.
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TECH FINANCE
Cogeco Shaw Communications Averna Technologies Counsel to underwriter in Gestion Counsel to underwriter in offering of Counsel to Caisse de dépôt Audem’s private placement of Cogeco senior notes shares
Corus Entertainment Allocadia Software Vivametrica Counsel to underwriters in equity Counsel to Allocadia in venture capital Counsel to Vivametrica in private financing of Corus financing placement of common shares
IMAX China Holding Highbridge Principal Strategies Kambo Green Solutions Counsel to IMAX China Holding in Counsel to Highbridge in providing Counsel to Empresario Capital connection with its IPO in the Hong acquisition financing to UrtheCast to Partners in its investment in Kambo Kong Exchange acquire Deimos from Elecnor
Shopify CO2 Solutions Data Group Income Fund Counsel to Bessemer Venture Counsel to CO2 Solutions in its Counsel to Data Group in rights Partners, largest shareholder of private placement offering Shopify, in Shopify IPO
Constellation Software Tecsys Inc. NYX Gaming Group Limited Counsel to Constellation Software in Counsel to Tecsys in its bought deal Represented NYX Gaming Group in unsecured subordinated floating rate offering of common shares its initial public offering of its shares debenture offering
Tandem Expansion Fund Slyce Inc. Constellation Software Counsel to Tandem in purchase of Counsel to Slyce Inc. in its listing on Counsel to Constellation Software in unsecured convertible notes issued by the TSX Venture Exchange and grant its rights offering Acquistion of options
TECH COMMERCIAL
Provincial Government Provincial Government Provincial Government VoIP and unified communications Home health care monitoring services Data services
Provincial regulators Provincial Government Public competitive procurement of Industrial equipment auctioneer Telecom equipment maintenance new replacement national IT systems, Mobile application development services including systems integration and services application management services
Industrial equipment auctioneer Financial Institution Financial Institution Outsourcing of disaster recovery Cloud computing platform and Telecommunications colocation services services services
Provincial Agency Financial Institution Public competitive procurement of Spend management (procurement) Energy company BPO processes surrounding health software-as-a-service Systems integration services claims submissions and related
payments
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Crown Corporation Health Authority Crown Corporation Strategic large system integration Largest eHealth systems in Canada Core system replacement deal transaction for web related services
Financial Institution Financial Institution Outsourcing Service Provider Retail financing registration, Renewal of financial processing Competitive procurement of IT bankruptcy, recovery, and collections services outsourcing services (In Progress) services
Financial Institution Manufacturer Retailer Cloud-based storage services Outsourcing of data centre services Cloud-based productivity applications
Retailer Provincial Agency Provincial Agency HR outsourcing services agreement Software development services IT infrastructure services
IT services supplier Aircraft manufacturer Pension Competitive procurement of IT IT Outsourcing: end-user services and Core system replacement deal services help desk
Utility Global real estate company Utility Outsourcing of human resources Software integration services IT staff augmentation services functions
Utility Department Store Department Store Outsourcing of fleet management Outsourcing of retail remittance Outsourcing of fraud prevention services (including telematics) processing services services
Unparalleled knowledge on technology law
Our computer and information technology law practice is led by lawyers who are among the country's foremost authorities. Among their publications:
– Halsbury’s Laws of Canada – Communications, a definitive text setting out the laws on regulating telecommunications, broadcasting and radio-communications in Canada, co-authored by Charles Morgan
– The leading three-volume text entitled Sookman: Computer Law: Acquiring and Protecting Information Technology by Barry Sookman is the only current source of Canadian information that comprehensively analyzes these issues
– Computer Law, by George S. Takach, a leading text on this ever-changing and complex area of law
For news and insights on technology, intellectual property and privacy laws follow us on Twitter at @MT_TechLaw.
Cybersecurity, Privacy & Data Protection
Hacked or stolen business information is a high risk impact in today’s electronic world. Cybersecurity is no longer an option in the businesses management, production and retention of company intelligence. Information protection requires forward thinking strategies, rigorous planning and vigilance.
The Cybersecurity, Privacy and Data Protection (CPDP) Group has been at the forefront of data protection, breach planning and issues management. As lead counsel on numerous key public and private cybersecurity initiatives, we have acted on many of the largest and high profile data breaches and preventative projects in North America and abroad.
We assist clients in their data protection initiatives, scenario planning, information management, anti-spam compliance, risk mitigation, market reputation and issues management. Our proven expertise makes the difference between averting a game- changing crisis and being embroiled in issues that affect markets, customer mind-share, impose major costs, and divert management time. Why McCarthy Tétrault? UNPARALLELED INDUSTRY INSIGHT
We are industry thought leaders. Trusted advisors to major Canadian and international public and private sector clients. Our experience in data protection matters is underpinned by our insight into data management strategies and practical commercial realities of technology transformation. Whether undertaking compliance efforts, working with third- party providers or addressing a breach, clients have the confident assurance that we protecting their interests and information assets in full compliance to industry standards and government requirements. INTEGRATED, ACTIONABLE BUSINESS SOLUTIONS
We take a proactive risk mitigation approach to the privacy and cybersecurity issues that impact the full range of commercial transactions and litigation matters. Our advice is results-oriented — we provide strategies and actionable solutions that are adapted to the clients business – meeting their risk mitigation objectives at every decision point. COMPREHENSIVE SOLUTIONS FOR THE ENTIRE DATA LIFECYCLE
Information management infrastructure is highly complex and frequently involves multiple players in the pipeline. Our collaborative approach considers all stakeholders and touchpoints throughout the cybersecurity, privacy & data protection lifecycle. RECOGNIZED AS TRANSACTIONS AND PAYMENTS SPECIALISTS
Retail and financial services clients are frequently the most exposed to risk from data breaches. McCarthy Tétrault is Canada’s most active law firm in the consumer payments, and financial products and services space. We offer market leading expertise in consumer protection, payment card regulatory and compliance issues involving credit cards, local and international wire transfers, prepaid and virtual cards, deposit products and loyalty programs. Clients benefit from the combined experience of our cross-functional technology team in multi-platform deployments, cloud-related cybersecurity and data governance.
McCarthy Tétrault LLP
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Our Expertise
We offer an integrative approach on all information management matters impacted by data protection and privacy issues:
- Access rights - E-commerce transactions & payments - Privilege - Government access to electronic - Compliance programs - Process audits records and requests for information - Hardware and telecommunications - Professional services - Court actions and complaints procurement agreements - Cross-border data transfer and data - Human resources systems - Regulatory interventions sovereignty solutions - Data breach response - Litigation matters - Risk assessment and mitigation - Data hosting agreements - Mergers & acquisitions - Software licensing - Data privacy, security and transfer - Outsourcing agreements - Strategic planning - Data processing agreements - Privacy procedures, audits & requests - Website compliance
Who We Serve As privacy laws vary provincially, we advise on the intricacies of federal and provincial legislation for our clients who include:
- Educational institutions - Information technology providers - Pharmaceutical companies - Energy corporations - Insurance companies - Regulatory agencies - Entertainment companies - Manufacturing businesses - Retail outlets - Financial institutions - Municipalities - Service providers - Government agencies - Not-for-profit organizations (NPOs) - Technology developers - Health and medical institutions - Online entities - Telecommunications
What Our Clients Say “EFFICIENT – AND GIVE A “KNOWLEDGEABLE AND HAVE “DYNAMIC AND VERY VERY ATTENTIVE RELEVANT EXPERTISE AND CAPABLE PRACTITIONERS.” SERVICE.” EXPERIENCE.” Chambers Canada – Information Chambers Global – Canada – Chambers Canada – Information Technology Technology Information Technology CyberLex
Our CyberLex blog keeps individuals and companies informed on Canadian and international trends and developments in cybersecurity, privacy and data protection law, and how to address the challenges and opportunities in these areas. Contact Us
VANCOUVER CALGARY TORONTO MONTRÉAL QUÉBEC CITY David Crane Matthew Flynn Barry B. Sookman Charles S. Morgan Pierre Jolin [email protected] [email protected] [email protected] [email protected] [email protected]
Roland Hung Kirsten Thompson Jacques Rousse [email protected] [email protected] [email protected]
Trevor Lawson [email protected]
McCarthy Tétrault LLP McCarthy Tétrault Advance™ Building Capabilities for Growth
6th Annual Technology Law Innovation Summit
April 19, 2017
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca Welcome
Charles Morgan
McCarthy Tétrault LLP / mccarthy.ca 3 Agenda Morning Session
¬ 8:00 a.m. Breakfast/Registration ¬ 8:45 a.m. Intro/Welcome ¬ 9:00 a.m.- 9:30 a.m. Cybersecurity/Privacy ¬ 9:30 a.m. – 10:30 a.m. Outsourcing/Procurement ¬ 10:30 a.m. Coffee Break ¬ 10:45 a.m. – 11:30 a.m. Fintech ¬ 11:45 a.m. – 12:30 p.m. Tech Hot Topics
McCarthy Tétrault LLP / mccarthy.ca 4 Agenda (con’t) Afternoon Sessions
¬ 12:45 p.m. – 1:30 p.m. Luncheon Presentation with Fazila Seker, Director, MaRS Innovation ¬ 1:30 p.m.- 2:15 p.m. Tech M&A Annual Update ¬ 2:15 p.m. Closing Remarks
McCarthy Tétrault LLP / mccarthy.ca Cybersecurity and Privacy
Charles Morgan (McCarthy Tétrault) Miranda Lam (McCarthy Tétrault)
McCarthy Tétrault LLP / mccarthy.ca McCarthy Tétrault Advance™ Building Capabilities for Growth
Regime Change on the Horizon:
The EU General Data Protection Regulation (GDPR) -- An Introductory guide for Canadian businesses
Charles Morgan, Partner Direct Line: (514) 397-4230 E-Mail: [email protected] April 19, 2017
16561992
Presentation
¬ Context ¬ Territorial Scope of Application ¬ Major Changes ¬ Consent ¬ Data Protection by Design ¬ Data Portability ¬ Right to be Forgotten ¬ Data Breach Reporting ¬ Sanctions ¬ Implications for Canadian Businesses
McCarthy Tétrault LLP / mccarthy.ca
Context ¬ GDPR to replace the EU Directive 95/46/EC on May 25, 2018 ¬ The EU Directive has been the inspiration for data protection legislation in the EU for over 20 years ¬ The EU Directive initially introduced to facilitate the “free flow of data” within the EU ¬ The EU Directive’s principles also served as sources of inspiration for Quebec Privacy Act and PIPEDA ¬ Regulation v. national law
Data protection rules intimately linked to « trade »
McCarthy Tétrault LLP / mccarthy.ca
Context ¬ One of the most wide-ranging pieces of legislation passed by EU in years ¬ Result of 4 years of debate over draft GDPR published in Jan 2012 ¬ Adopted April 2016; takes effect May 2018 ¬ Adopted in the context of: ¬ Schremm Case (concerns re data transfers and processing by multinationals) ¬ NSA spying revelations ¬ « right to be forgotten » jurisprudence ¬ Cybersecurity anxiety ¬ An EU data protection regime change: ¬ That applies directly to many Canadian companies ¬ That may provide « advance notice » of changes to come in our own data protection regime
Where goes the EU data protection regime; thither goes Canada’s privacy regime also?
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca
Territorial Scope of Application ¬ EU “established” controllers or processors ¬ An “establishment” in the EU where personal data are processed ¬ Where it exercises “any real and effective activity – even a minimal one” (sales office, sales rep) ¬ Non-EU “established” organizations that target or monitor EU data subjects ¬ Offering of goods or services (payment not required) – (e.g. euro pricing; .fr; .de) ¬ Monitoring of behaviour (e.g. tracking online behaviour) Are you sure the GDPR does not apply to you?
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca
Sanctions ¬ Breaches of basic requirements (e.g. Consent) ¬ Article 83 of the GDPR can amount to 4% of the total worldwide annual turnover of a company or €20,000,000, whichever is higher ¬ Breaches of data breach requirements: ¬ Article 83 of the GDPR can amount to 2% of the total worldwide annual turnover of a company or €10,000,000, whichever is higher
Ouch!
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca
Transparency and Consent
¬ Consent: freely given, specific, informed and supported by unambiguous indication of agreement ¬ Presumption that consent is not valid unless separate consents obtained for separate processing activities ¬ Data subject must have right to withdraw consent ¬ Extremely burdensome disclosure requirements, presented in concise, transparent, easily accessible manner ¬ Children under 13 can never, themselves, consent to processing of their data (No « omnibus » consents!)
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca
Restrictions on automated decisions
¬ Individuals have right not to be subject to decisions that have legal effects based solely on automated processing ¬ Data controller must provide data subject with human intervention to express point of view or to contest decision ¬ Further restrictions apply where decision- making is based on sensitive data (including genetic and biometric data)
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca
Data Protection by Design
¬ Where « high risk » processing undertaken, must implement « privacy impact assessment » ¬ Use of pseudonymisation: process data in a manner that separates personal data from identifiable data subject ¬ High duty of care in selecting personal data processing service providers ¬ Approved data processing standard clauses may be published
Newly coined term: pseudonymisation!
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca
Data Portability
¬ Data subjects can request that their personal data be ported to them or to a new provider in a machine- readable format ¬ Request must be met within one month
Ultimately, data subjects own their data
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca
« Right to be Forgotten »
¬ Right to require data to be « erased » when data collected illegally or when consent to collection and use has been withdrawn ¬ If controllers have made data public that is subject to erasure request, then controller must notify data processors
Can’t be used to forgive one’s debts!
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca
Data Breach Reporting ¬ Data processors must report personal data breaches to data controllers ¬ Data controllers must report to supervisory authority and, in some cases, to data subjects ¬ Must maintain internal breach register
Sound familiar?
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca
Implications for Canadian Businesses
¬ Assess whether you or your affiliates will be affected immediately ¬ Impact on future business expansion? ¬ Impact on future evolution of Canadian privacy regime?
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca
Be Prepared for the EU GDPR
¬ Privacy by Design and Privacy by Default ¬ Data Portability ¬ Right to be forgotten ¬ Right to access – copy of personal information file, free of charge, in an electronic format ¬ Advertising based on PI – opt-in ¬ Breach notification within 72 hours of becoming aware of the breach
McCarthy Tétrault LLP / mccarthy.ca
Internet-related Breaches: What to do?
Data breach (see Lozanski v. Home Depot Inc., 2016 ONSC 5447)
Immediate investigation and notice to affected customers, assumption of responsibility and provision of credit monitoring services and identity theft insurance to affected customers The compromise of one’s credit card information does not necessarily mean harm has been suffered
Hackers/online threats Uncover identity via Norwich order (see for example College of Opticians of British Columbia v. Coastal Contacts Inc., 2010 BCSC 104; GEA Group AG v. Ventra Group Co., [2009] O.J. No. 3457 ) Anton Piller orders Injunctive relief
Publication of confidential data/violation of IP rights Consider an Equustek order (see Equustek Solutions Inc. v. Jack, 2015 BCCA 265 at paras. 54-56, 90, aff’g 2014 BCSC 1063 , leave to appeal to SCC granted, 2016 CanLII 7602 (Appeal heard 6 December 2016; Judgment reserved))
McCarthy Tétrault LLP / mccarthy.ca
VANCOUVER MONTRÉAL Suite 2400, 745 Thurlow Street Suite 2500 Vancouver BC V6E 0C5 1000 De La Gauchetière Street West Tel: 604-643-7100 Montréal QC H3B 0A2 Fax: 604-643-7900 Tel: 514-397-4100 Toll-Free: 1-877-244-7711 Fax: 514-875-6246 Toll-Free: 1-877-244-7711 CALGARY Suite 4000, 421 7th Avenue SW QUÉBEC Calgary AB T2P 4K9 500 Grande Allée Est, 9e étage Tel: 403-260-3500 Québec QC G1R 2J7 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
McCarthy Tétrault LLP / mccarthy.ca
Questions
McCarthy Tétrault LLP / mccarthy.ca Outsourcing and Procurement
Barry Sookman(McCarthy Tétrault) David Crane (McCarthy Tétrault) Guest Speaker: Ron Babin, Ryerson University
McCarthy Tétrault LLP / mccarthy.ca Key Outsourcing Trends
Professor Ron Babin [email protected] Agenda
Five outsourcing trends 1. Robotic process automation 2. Digital disruption and the role of external vendors 3. Global value of outsourcing and offshoring: time to re-shore? 4. Risk and security in outsourcing 5. Governance and relationship management
Copyright 2017 - Dr Ron Babin, Ryerson 25 University Agenda
Five outsourcing trends* 1. Robotic process automation 2. Digital disruption and the role of external vendors 3. Global value of outsourcing and offshoring: time to re-shore? 4. Risk and security in outsourcing 5. Governance and relationship management * From the Centre for Outsourcing Research and Education (CORE)
Copyright 2017 - Dr Ron Babin, Ryerson 26 University 1 – Robotic process automation (RPA) • Increasingly robotic process automation (RPA) in business processing is displacing lower cost human labour, both offshore and domestically • RPA allows regular business users to teach the technology to perform complete tasks, which often involve interaction with different pieces of software, without the need to change legacy IT systems • RPA service tasks are completed by computer ‘bots’ rather than human operators • With improvements in artificial intelligence and cognitive learning technology, RPA can begin to handle activities that require some degree of human judgement • Outsource providers must include RPA in their service offerings. RPA has the capability to reduce the need for low-cost offshore labour Copyright 2017 - Dr Ron Babin, Ryerson 27 University 2 – Digital disruption and the role of external vendors • Organizations implementing digital transformation strategies will leverage traditional outsourcing services to maintain ongoing legacy systems, and will leverage a network of new service providers to develop and execute the digital transformation strategy
• 57% of buyers will look to new or non-traditional service providers, while only 39%
will continue to use traditional providers (IDC 2016) • IDC research (2017) shows that new service providers are two to three times more productive (revenue per employee) than traditional outsource providers • Digital transformation service providers are small, research-based, and often work in collaboration with research centres and incubators. Personnel at these new service providers are “digital natives”, having grown up in the Internet age, always connected and always on. • SMAC technologies (Social, Mobile, Analytics, and Cloud) are the base technologies; however, their business knowledge of specific industries, such as banking or retail, may be limited and they are unfettered by past practices and legacy processes and systems Copyright 2017 - Dr Ron Babin, Ryerson 28 University 5 – Governance and relationship management
• What gets measured gets managed: Contracts establish SLAs which are measured, but the relationship is also important. Contractual governance and relational governance are complements, not substitutes. • The most important things cannot be measured. Openness, trust, collaboration, communication and knowledge sharing are critical to the success of complex outsourcing arrangements. • A poor relationship often results in reduced contract value • Buyers and providers must attend to both contractual and relational governance. Often the relational component is ignored, which can lead to disputes within the contract and reduced value at contract renewal.
Copyright 2017 - Dr Ron Babin, Ryerson 29 University
Procurement issues
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SAP UK Ltd v Diageo Great Britain Ltd [2017] EWHC 189 (TCC) (16 February 2017)
¬ Diageo paid SAP between £50 – £61 million in licence and maintenance fees to use the mySAP Business Suite. ¬ It integrated the software with software from Salesforce using SAP PI integrator software. ¬ SAP claimed £54,503,578 in additional fees based on the API access. ¬ SAP’s standard license terms purport to tie license fees to usage. ¬ It claimed fees based on indirect use or access to its software.
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SAP UK Ltd v Diageo Great Britain Ltd [2017] EWHC 189 (TCC) (16 February 2017)
¬ “Recital A. SAP wishes to grant to the Customer, and the Customer wishes to accept, a licence to use certain software on the terms set out in this Agreement. The usage authorised by this Agreement is set out in the Exhibit; this may increase over time by means of further Exhibits being signed.” ¬ “3.2 The authorised usage of the Software is set out in the Exhibit. The Customer shall inform SAP promptly if its usage is beyond that set out in the Exhibit, in which case additional licence and maintenance fees will become payable in accordance with clause 6.2.” ¬ Without prejudice to any other rights and remedies of or available to SAP, if usage of the Software does not correspond to the Exhibit...the parties will meet in good faith to discuss the circumstances that gave rise to the recurrence and in the event such recurrence cannot be prevented or subsequently happens again then the Customer will pay for the necessary licences, additional licence and maintenance fees calculated in accordance with Customers then current corporate pricing levels, or in the absence of the same SAP’s then current price list shall be due from the date on which the unauthorised usage was first identified….
McCarthy Tétrault LLP / mccarthy.ca 16558272 32
SAP UK Ltd v Diageo Great Britain Ltd [2017] EWHC 189 (TCC) (16 February 2017)
“Named User” was defined as follows: ¬ an individual representative (e.g. employee, agent, consultant, contractor) of the Customer, a Group Company, an Outsource Provider or a Supply Chain Third Party who is authorised to access the Software directly or indirectly (e.g. via the Internet or by means of a hand-held or third party device or system). The extent to which a Named User is authorised to use the Software depends upon his user category as set out in the schedule.
McCarthy Tétrault LLP / mccarthy.ca 16558272 33
SAP UK Ltd v Diageo Great Britain Ltd [2017] EWHC 189 (TCC) (16 February 2017)
¬ Judge found that there was indirect access to SAP software. ¬ Judge found that license fees were owed even though there were no Named User categories for this usage. ¬ The starting point is the express words used by the parties in the Agreement. Introductory paragraph A and clause 3.1 provide that SAP grants to Diageo a licence to use the Software… ¬ The extent of the licence is defined by Introductory paragraph A and clause 3.2 which state that the usage authorised by the Agreement is set out in the Exhibit… ¬ The plain and obvious meaning of the above provisions is that only Named Users are authorised to use or access the mySAP ERP software… ¬ Usage of the mySAP Business Suite is subject to Named User pricing.
McCarthy Tétrault LLP / mccarthy.ca 16558272 34
SAP UK Ltd v Diageo Great Britain Ltd [2017] EWHC 189 (TCC) (16 February 2017)
¬ Diageo took the position that it did not owe license fees because ¬ it paid SAP license fees to use its software ¬ it paid SAP a licence fee to use the SAP PI integrator program ¬ it only integrated third party cloud based software that accessed or used databases residing in the SAP software ¬ none of the Named User categories in its license covered this kind of use or access ¬ no license fees were otherwise specified in the pricing exhibit for these activities ¬ the type of usage made by it did not exist at the time of contracting ¬ some of the use merely replaced access to the SAP software through call center personnel with a more efficient way of accessing and using data in the SAP applications.
McCarthy Tétrault LLP / mccarthy.ca 16558272 35
SAP UK Ltd v Diageo Great Britain Ltd [2017] EWHC 189 (TCC) (16 February 2017)
¬ Other potential interpretations: ¬ Clause 3.1 granted the customer a right to use the software. Nothing in that license grant limited access or use to only Named Users. ¬ The categories and numbers of licensed users were set out in the exhibit. ¬ The wording in Recital A and Clause 3.2 referred only to the number of Named Users per category set out in the exhibit. If that number was exceeded SAP merely became entitled to additional fees for the extra number of users in the category. ¬ If the customer and SAP had agreed on the incremental price for the additional usage by the categories of Named Users which did not “correspond to the Exhibit”, that price would be the additional amount the customer would pay. If there was no agreement on the amount of the additional fees, then the SAP price list would apply. ¬ Implications of case?
McCarthy Tétrault LLP / mccarthy.ca 16558272 36
Questions
McCarthy Tétrault LLP / mccarthy.ca FinTech
Heidi Gordon (McCarthy Tétrault) Matt Flynn (McCarthy Tétrault) Guest Speaker: Sean Burke, COO, FrontFundr
McCarthy Tétrault LLP / mccarthy.ca 39 Agenda
1. OSC LaunchPad 2. Ontario Capital Raising Exemptions 3. Q&A with Matthew Flynn and Sean Burke
McCarthy Tétrault LLP / mccarthy.ca
40 OSC LaunchPad
What is OSC LaunchPad?
¬ Overall purpose is to modernize regulation to support fintech innovation, while protecting investors and promoting confidence in our markets
¬ Three main focuses: (i) engage with fintech community; (ii) offer opportunity for direct support in navigating rules; and (iii) take learnings and apply them to similar businesses going forward
¬ Pilot initiative by the Ontario Securities Commission (OSC), which launched on October 24, 2016
¬ On February 23, 2017 the Canadian Securities Administrators (CSA) launched the Regulatory Sandbox Initiative
McCarthy Tétrault LLP / mccarthy.ca
41 OSC LaunchPad
Who is eligible for OSC LaunchPad support?
¬ New or early-stage fintech businesses that have not yet started operations or are in the process of applying to the OSC for registration or exemptive relief ¬ Businesses with new innovation or a significantly different product, service, or application from those currently available ¬ The innovation will likely provide identifiable benefits to investors, either directly or indirectly ¬ Consumer or investor risks presented by the innovation can be addressed ¬ The business model raises new or complex regulatory questions or concerns
McCarthy Tétrault LLP / mccarthy.ca
42 OSC LaunchPad
What types of support are provided by OSC LaunchPad?
¬ Meeting or conference call with OSC LaunchPad team
¬ Informal guidance on securities implications at an early stage
¬ Time-limited registration or exemptive relief to allow live testing
¬ Flexible approaches to regulatory requirements, if required
For more information visit www.osclaunchpad.ca
McCarthy Tétrault LLP / mccarthy.ca
43 Ontario Capital Raising Exemptions
¬ In 2011, OSC undertook review of “exempt market”
¬ Review initially focused on existing exemptions
¬ OSC expanded scope of review to look for ways for start-ups and small and medium-sized companies to raise money from a broader pool of investors
¬ In January 2016, Crowdfunding Exemption and Offering Memorandum Exemption came into force in Ontario
¬ Critics focus on lack of harmonized regime across Canada and say that new exemptions fall short
McCarthy Tétrault LLP / mccarthy.ca
44
Q&A with Matthew Flynn and
Sean Burke, COO
For more information visit https://www.frontfundr.com/ @FrontFundr
McCarthy Tétrault LLP / mccarthy.ca
45 Contact Us
Matthew Flynn Partner, McCarthy Tétrault LLP [email protected] ǀ 416-601-8039
Heidi Gordon Associate, McCarthy Tétrault LLP [email protected] ǀ 416-601-8176 ǀ @Heidi_Gordon
McCarthy Tétrault LLP / mccarthy.ca
Questions
McCarthy Tétrault LLP / mccarthy.ca Tech Hot Topics
Artificial Intelligence Keith Rose (McCarthy Tétrault)
McCarthy Tétrault LLP / mccarthy.ca McCarthy Tétrault Advance™ Building Capabilities for Growth
Artificial Intelligence, Machine Learning and Legal Tech
Keith Rose Direct Line: 416-601-7913 E-Mail: [email protected] Twitter: @KeithDRose April 19, 2017
McCarthy Tétrault LLP / mccarthy.ca #15861112 Artificial Intelligence vs. Machine Learning
¬ Artificial Intelligence is a goal: human-like thinking and reasoning ¬ Machine Learning is a technique: using algorithms to parse data, extract patterns and information, and then apply them to make determinations ¬ “Deep Learning” is a subset: typically involving neural networks trained on massive datasets.
McCarthy Tétrault LLP / mccarthy.ca 16578631 49
Why now?
¬ AI has been around since the 1950s. So what has changed now? ¬ Big Data ¬ Cheaper parallelization (GPUs)
McCarthy Tétrault LLP / mccarthy.ca 16578631 50
Legal Tech Applications
¬ Document review (due diligence, lease reviews) ¬ Legal research ¬ Natural language research tools ¬ Legal analytics ¬ Descriptive vs. predictive ¬ Data-driven analyses of legal and procedural issues
McCarthy Tétrault LLP / mccarthy.ca 16578631 51
Issues
¬ Whose data? Whose insights? ¬ What biases? ¬ Whose judgment? ¬ Whose liability?
McCarthy Tétrault LLP / mccarthy.ca 16578631 52
Regulatory Approaches
GDPR Article 22: “1. The data subject shall have the right not to be subject to a decision based solely on automated processing, including profiling, which produces legal effects concerning him or her or similarly significantly affects him or her.” ¬ Exceptions: express consent, authorized by law, or necessary for performance of a contract between the data subject
McCarthy Tétrault LLP / mccarthy.ca 16578631 53
VANCOUVER MONTRÉAL Suite 1300, 777 Dunsmuir Street Suite 2500 P.O. Box 10424, Pacific Centre 1000 De La Gauchetière Street West Vancouver BC V7Y 1K2 Montréal QC H3B 0A2 Tel: 604-643-7100 Tel: 514-397-4100 Fax: 604-643-7900 Fax: 514-875-6246 Toll-Free: 1-877-244-7711 Toll-Free: 1-877-244-7711
CALGARY QUÉBEC Suite 4000, 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 Suite 5300, TD Bank Tower UNITED KINGDOM & EUROPE Box 48, 66 Wellington Street West 125 Old Broad Street, 26th Floor Toronto (Ontario) M5K 1E6 London EC2N 1AR Tel: 416-362-1812 UNITED KINGDOM Fax: 416-868-0673 Tel: +44 (0)20 7786 5700 Toll-Free: 1-877-244-7711 Fax: +44 (0)20 7786 5702
McCarthy Tétrault LLP / mccarthy.ca 16578631
Questions
McCarthy Tétrault LLP / mccarthy.ca Tech Hot Topics
Telematics Legal Update George Takach (McCarthy Tétrault)
McCarthy Tétrault LLP / mccarthy.ca 57 THE TELEMATICS ENVIRONMENT OEMs, dealers, insurers, other traditional players The disruptors: Google, Apple, Silicon Valley And then Tesla The new business models, from car ownership to mobility service: networked automobiles, car swapping, ride sharing Canadian investments in connected vehicle space Road tests in Canada of automated vehicles
McCarthy Tétrault LLP / mccarthy.ca DOCS #16582260
58 TELEMATICS STANDARDS
US Federal Automated Vehicles Policy – best practices for designing, testing and deploying of automated vehicles (includes data recording, cybersecurity, vehicle’s object and event detection response capabilities) Auto ISAC released “Automotive Cybersecurity Best Practices” – addressing governance, risk management, security by design, threat detection, incident response, training, collaboration with third parties
McCarthy Tétrault LLP / mccarthy.ca DOCS #16582260
59 TELEMATICS LEGAL LANDSCAPE Compliance issues: privacy (consent), CASL, cybersecurity Legal Liability issues: several million miles of autonomous driving, and mid double digit number of collisions, and of these, a few fatal accidents involving automated vehicles Question: degree of safety relative to human drivers? In 2015, 69 deaths in Ontario from distracted driving From driver negligence to product liability
McCarthy Tétrault LLP / mccarthy.ca DOCS #16582260
Questions
McCarthy Tétrault LLP / mccarthy.ca Tech Hot Topics
Cloud Ryan Prescott (McCarthy Tétrault)
McCarthy Tétrault LLP / mccarthy.ca 62 The Cloud Comes to Canada
2014: IBM Softlayer opens data centre in Toronto. 2015: IBM Softlayer opens second data centre near Montreal. May/July 2016: Microsoft opens cloud data centre options for Azure, Office 365 and Dynamics CRM (Toronto and Quebec City). December 2016: Amazon AWS launches new Canada (Central) Region near Montreal for certain AWS services. March 2017: Google Cloud Platform announces it will open a Google Cloud Region in Montreal in the next year or so.
McCarthy Tétrault LLP / mccarthy.ca 63 The Cloud Comes to Canada
Benefits for Canadian Customers May reduce barriers to use for a number of Customers: Public Sector customers that cannot (without difficulty) transfer personal information across borders (e.g. B.C Gov.), or by policy decide not to for sensitive or protected data (e.g. Government of Canada Cloud Adoption Strategy) Export Control Issues (e.g. controlled information re: dual-use goods) Certain Regulated Sectors or Uses End User/Market Preferences Existing Contractual Restrictions Avoiding Some Foreign Regulations Trickle-down benefit of giving options to other SaaS providers that use IBM/Microsoft/Amazon/Google cloud infrastructure. More customer choice & vendor competition. Increased attention on the Canadian market by vendors.
McCarthy Tétrault LLP / mccarthy.ca 64 The Cloud Comes to Canada But Beware… Read & understand the fine print. Canadian geographic commitment may be limited, for example, to only: 1. Storage of data (and not other handling of data or ancillary services) 2. Subset of vendor’s service offerings 3. Certain types of data in a service offering Vendors newly coming in from outside Canada may still not have solved for other Canadian regulatory issues. For example, they may have privacy terms tailored to address EU Data Protection issues and U.S. HIPAA issues, but not issues under Provincial health privacy laws. Don’t forget the (longer term?) risk that they might leave Canada.
McCarthy Tétrault LLP / mccarthy.ca 65 IP Risk in the Cloud “According to Boston Consulting Group, there has been a 22 percent rise in cloud-based IP lawsuits over the last five years in the United States. And non-practicing entities (NPEs) have increased their acquisition of cloud-related patents by 35 percent over the same period.” -Microsoft Microsoft Azure IP Advantage program: 1. Expanded IP indemnity to cover open source technology that powers Azure services (licensed under Msoft terms; not separate terms). Note: generally 3rd party defense indemnity & covers only Msoft products and excludes Customer Solutions, Customer Data, combinations, modifications, etc. 2. Patent Pick: 10,000 Microsoft patents available to eligible Azure customers for defending certain patent lawsuits (i.e. to counter-suit) against their services that run on top of Azure (i.e. suits against their Azure workloads). 3. Springing License: If Microsoft transfers patents in the future to NPEs, they will not be allowed to be asserted against eligible Azure customers.
McCarthy Tétrault LLP / mccarthy.ca 66 snIP/ITs
http://www.canadiantechlawblog.com Insights on Canadian technology and intellectual property law
McCarthy Tétrault LLP / mccarthy.ca VANCOUVER MONTRÉAL Suite 2400, 745 Thurlow Street Suite 2500 Vancouver BC V6E 0C5 1000 De La Gauchetière Street West Tel: 604-643-7100 Montréal QC H3B 0A2 Fax: 604-643-7900 Tel: 514-397-4100 Toll-Free: 1-877-244-7711 Fax: 514-875-6246 Toll-Free: 1-877-244-7711 CALGARY Suite 4000, 421 7th Avenue SW QUÉBEC CITY Calgary AB T2P 4K9 500, Grande Allée Est, 9e étage Tel: 403-260-3500 Québec QC G1R 2J7 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 Suite 5300, TD Bank Tower LONDON, U.K. Box 48, 66 Wellington Street West 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 7786 5700 Toll-Free: 1-877-244-7711 Fax: +44 (0)20 7786 5702
McCarthy Tétrault LLP / mccarthy.ca Questions
McCarthy Tétrault LLP / mccarthy.ca Tech Hot Topics
CASL Update Dan Glover (McCarthy Tétrault)
McCarthy Tétrault LLP / mccarthy.ca Phase One (July 1, 2014 – June 30, 2017)
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 14376030 70 The Penalties to Date
$3M settlement
$1.1M Notice of Violation
$200K voluntary undertaking
$150K voluntary undertaking
$60K voluntary undertaking
$50K fine (down from $640K)
$48K voluntary undertaking
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 14376030 71 Phase Two (July 1, 2017) CASL will permit lawsuits including: ¬ compensation for loss, damages and expenses;
PLUS ¬ awards capped at $1 million per day for breach of CASL with risk of class actions
¬ Also watch out for computer software lawsuits premised on different “installation” theory
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 14376030 72 The Two Classes of Danger Offences under ss. 6-9 of CASL ¬ CEMs and unsubscribes ¬ Altering transmission data ¬ Installation of computer program Preserves undertaking escape hatch
Offences introduced by CASL into PIPEDA & Competition Act ¬ Address harvesting ¬ False or misleading subject- header, sender information, locator or body of a CEM No escape hatch!
McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 14376030 73 Staving Off a CASL Penalty ¬ A “due diligence” defence may apply if the company can prove “the existence and implementation of an effective corporate compliance program” Keys are a good written policy and procedure and responsive records of consents, CEMs, basis for exemptions, 3rd-party lists ¬ Be conservative with consents for X messaging, computer programs ¬ Watch out for third-party lists ¬ Be scrupulous about product or service claims, especially in subject McCarthy Tétrault S.E.N.C.R.L., s.r.l. / mccarthy.ca 14376030 74
Questions
McCarthy Tétrault LLP / mccarthy.ca Tech Hot Topics
Immigration Update Naseem Malik (McCarthy Tétrault)
McCarthy Tétrault LLP / mccarthy.ca 77 IMMIGRATION UPDATE
Changes to Canadian Immigration Law Temporary Foreign Worker Program Express Entry applications for permanent residence Citizenship Rule Changes Employer Compliance System Possible effects of American Immigration system changes Lifting of some Visa restrictions to Canada Implementation of Electronic Travel Authorization
McCarthy Tétrault LLP / mccarthy.ca DOCS #16582260
Questions
McCarthy Tétrault LLP / mccarthy.ca Canada’s CECR Program Commercializing Canadian Innovations
Dr. Fazila Seker, Director of Venture Development
April 19, 2017
ACADEMIC MEMBERS PORTFOLIO DIVERSITY
Therapeutics Physical sciences Clean Technology
Medical devices Information and communications and medical diagnostic technology (ICT) PORTFOLIO PERFORMANCE
MI by the Numbers OUR PORTFOLIO
1400+ 100+ 60 52 technologies technologies companies funded active companies assessed by our team under management and supported still in Canada
$22.9M $159M ~400 Internal investment External investment Jobs created GOVERNMENT PARTNERS
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Provincial CECR COMMUNITY ASSET LIFE CYCLE
Exit PORTFOLIO PARTNERS PORTFOLIO INVESTORS
CANADIAN INVESTORS FOREIGN INVESTORS
Puffin Partners
Winfield Bernard M. Venture Group Gordon Unitrust
Plus other angel groups and private trusts COMPANIES WITH TRACTION
BresoTec PORTFOLIO EXAMPLES
UTEST UTEST BY THE NUMBERS UNIVERSITY OF TORONTO
Developing the next generation of photovoltaic cells
Combining cutting edge quantum dot technology with efficient silicon solar cells in a hybrid architecture to capture more of the sun’s energy.
Incorporated in over Establishing a first 2015 $10M 15 commercial prototype with MaRS Innovation raised to-date seed funding FTEs
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Making Mammography Economically Available in Resource Constrained Economies - Affordable imaging for Life
XLV Diagnostics is developing a next generation affordable, high performance digital mammography system based on the company's novel, patented, solid-state electrostatic imaging technology that is intended to make this life saving cancer screening technology available to poorly served women in developing nations.
Incorporated in Currently employs $6.5M 6 people 2011 raised to-date
25 • XLV’s patent protected digital mammography machine’s 40 µm image resolution produces superior images for less than half the (selling) price of competitive digital mammography machines • Engineering prototype development complete • Clinical validation in Canada and USA to start in Q4 2016 • Initial target markets: India and China SUNNYBROOK
Better Cancer Management Through Ultrasound
WaveCheck’s analysis software transforms conventional diagnostic ultrasound into a tool for monitoring tumour response to chemotherapy. For breast cancer, WaveCheck drastically reduces time to information from 4-6 months to as early as 1 week.
Commercialization partnership with 4 multisite $5M GE Healthcare clinical studies granted in cash and cash equivalents
19 • First GE prototype launched June 2016 at US study partner site MD Anderson. • Grant funding from MaRS Innovation, OICR, and FedDev. • MaRS Innovation obtained Health Canada Class 2 ruling for WaveCheck in 2012. • WaveCheck helps put time on the patient’s side by providing early decision-making capability and better treatment options to help avoid costly and potentially ineffective treatment.
Multisite Study Partners: Initial Intended Use: Health Canada ruled as a Class 2 device MD Anderson (US) FDA – 510(k) device clearance anticipated Princess Margaret Hospital St. Michael’s Hospital
20 OICR / MARSDD / MI
Accelerate the development of promising cancer therapies
Triphase Accelerator is a private drug development company with a primary focus on oncology. Triphase Accelerator is dedicated to advancing novel compounds through Phase 2 proof-of-concept clinical studies using a unique, science-based, high quality model that is faster and more cost effective than traditional pharmaceutical and biotech industry drug development approaches.
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Web: marsinnovation.com Twitter: @marsinnovation LinkedIn: http://linkd.in/Lk7JoJ Tech M&A Annual Update
George S. Takach Pavan Jawanda Veronique Wattiez LaRose Guests: Jason Panzer and Tom Selby, Marlin & Associates
McCarthy Tétrault LLP / mccarthy.ca Mid-market Software M&A Update
April 2017
© 2017 Marlin & Associates All Rights Reserved – Proprietary & Confidential Marlin & Associates Securities LLC, a wholly owned subsidiary of Marlin & Associates Holding LLC, is a broker-dealer registered with the Securities and Exchange Commission and is a FINRA/SIPC member firm (www.finra.org). Investment banking and/or securities are offered through Marlin & Associates Securities LLC. Marlin & Associates Advises The World’s Leading Technology And Business Information Firms
Experienced Marlin Team Focused Domain Expertise Relevant Strategic Players
Partners with operating experience in senior roles at technology and Business Information & Intelligence business information companies
B2B Software Deep relevant expertise as an advisor – helping firms buy, sell and raise capital Financial Technology
Locations: New York (Headquarters), San Francisco, BPO Services Washington DC, and Toronto
Deep Domain Expertise Broad Industry Recognition Strong PE/VC Relationships
Database of over 23,000 people Cross-Border Boutique Best Software Focused US Boutique Investment Investment Banking Financial & Strategic from more than 13,000 relevant Banking Firm of the Firm Advisory Year companies of the Year - Wealth & Finance - The ACQ5 - The M&A Advisor International Two partners named Boutique Investment “40 Under 40 TMT Advisory Firm of Advised buyers and sellers in Banking Firm Dealmakers” the Year of the Year more than 25 countries - The M&A Advisor - The ACQ5 - Investment Dealer’s - The M&A Advisor Digest
Advised on more than 200 Middle Market Financial Technology Middle Market International / Cross Deal of the Year Information Technology successfully completed Border Deal of the Year Deal of the Year transactions - The M&A Advisor - Global M&A Network - The M&A Advisor
Proprietary & Confidential 105 Middle Market Software M&A Reaches All-times Heights
Global M&A North America M&A
90 6,000 50 2,500
72 4,800 40 2,000
54 3,600 30 1,500
36 2,400 20 1,000
18 1,200 10 500
Number of Transactions of Number
Number of Transactions of Number
Transaction Value ($bn) Value Transaction Transaction Value ($bn) Value Transaction
- - - -
Europe M&A Cross-Border M&A
50 2,500 50 2,500
40 2,000 40 2,000
30 1,500 30 1,500
20 1,000 20 1,000
10 500 10 500
Number of Transactions of Number Transactions of Number
Transaction Value ($bn) Value Transaction ($bn) Value Transaction
- - - -
Sources: S&P Capital IQ and M&A analysis Transaction Value ($bn) Note: * pro-rated for the full year Proprietary & Confidential 106 Number of Transactions A Number Of Players Lead Canadian Software M&A
Canadian Software M&A Top Canadian Software Buyers (# deals since ‘15)
1,500 300 9 8
7 7 1,200 5 200 4 4 4 4 4 900
600 100
300
Number of Transactions of Number Transaction Value ($mm) Value Transaction
0 0
EV / Revenue Multiples EV / EBITDA Multiples
3.0x 20.0x 2.5x 2.5x 2.5x 2.3x 14.7x 15.0x 14.0x 12.8x 2.0x 1.7x 1.6x 11.0x 1.4x 1.5x 1.5x 10.0x 10.0x 8.7x 8.6x 8.3x 7.8x 1.0x 1.0x 1.0x 5.4x 5.0x
n/m 0.0x 0.0x
Sources: S&P Capital IQ and M&A analysis Transaction Value ($bn) Note: * pro-rated for the full year Proprietary & Confidential 107 Number of Transactions Software M&A Multiples Trade At Healthy Levels Of Revenue And EBITDA
40x 5x
32x 4x
24x 3x EV EBITDA/EV 16x 2x Revenue /EV
8x 1x
0x 0x Q4 Q1 Q2 Q3 Q4 Q1 Q2 Q3 Q4 Q1 Q2 Q3 Q4 Q1 2013 2014 2015 2016 2017 EV / EBITDA EV / Revenue
Sources: S&P Capital IQ and M&A analysis Proprietary & Confidential 108 Five Principal Areas Impact Perceived “Value”
. Team . Partners What makes the company . Products . Customers stand out of the crowd . “Know-how” . Markets
. Given two otherwise identical firms, the one Expected future growing faster should command a higher revenue growth price
. Revenue model . Management . Revenue Perceived risk . Barriers to entry . Publicly traded concentration . Established brands company dynamics
. Ability to deliver real bottom line cash Future profitability . Maximize share holder value
Competitive process to . Companies viewed as "must-have" by a create supply and particular buyer/investor, combined with the demand dynamics price impact of competition
Proprietary & Confidential 109 PE Firms Are Winning More Often
. 61% increase in PE deals over 2010 (vs 38% increase in total deals)
. PE firms are paying more than strategics for mid-market software companies
Average revenue multiple Period Strategics PE
2013 3.5x 2.4x LTM 3.3x 4.2x
. Why are they winning? PE firms have patience PE investments have a good track record, attracting more money - PE investments have outperformed public equity markets by 5% over the last 10 years PE firms exist only if they invest
Proprietary & Confidential 110 Marlin & Associates Has An “Unfair” Competitive Advantage
Deep Sector Knowledge . Unrelenting focus on the technology and business information sector FOCUS . Unique understanding of industry structure and drivers of value . Extensive contacts at multiple levels among industry participants and financial investor firms
Strong Team with Relevant Investment Banking Expertise . Team with depth of execution experience in New York, San Francisco, Washington DC, and Toronto, and come from TEAM some of the most highly regarded firms in the industry including:
Domain Expertise/Operating Experience . Real world operating experience EXPERTISE . Our partners have worked at leading firms in the technology and business information sector, including:
Global Execution Capabilities . Half of our transactions are cross-border GLOBAL . The industry we serve is not defined geographically, nor are we
. We start before the beginning . We spend time learning about your objectives CONSULTATIVE . We offer unbiased advice based on your specific situation . We stay with you until the end
Track Record of Success Hamilton, Bermuda A portfolio company of Lucca, Italy
secured a $36 million investment . 15 years of success from TRACK RECORD has been acquired by . 200+ transactions Geneva, Switzerland Milan, Italy Marlin & Associates acted as exclusive Marlin & Associates acted as strategic and financial advisor to exclusive strategic and financial . Recognized by our peers and by industry associations QuoVadis and ABRY advisor to Tagetik Software srl.
An unrelenting commitment to maximize value for our clients
Proprietary & Confidential 111 Clients Choose Us To Advise Them On Their Most Important Strategic Moves
Hamilton, Bermuda London, United Kingdom A portfolio company of New York, NY Toronto, Canada New York City, NY has agreed to sell the Atrium received an investment from Port Talbot, United Kingdom has been acquired by wireless and extranet infrastructure has been acquired by businesses to received an investment from a portfolio company of has been acquired by
London, United Kingdom Geneva, Switzerland New York, NY Lake Success, NY Atlanta, GA Marlin & Associates acted as Marlin & Associates acted as exclusive Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as exclusive strategic and financial strategic and financial advisor to exclusive strategic and financial exclusive strategic and financial exclusive strategic and financial exclusive strategic and financial advisor to Advise Technologies, LLC advisor to M&O Systems, Inc. advisor to TMX Group QuoVadis and ABRY advisor to OpenGamma advisor to Vizolution.
Phoenix, AZ Salt Lake City, UT San Mateo, CA Brentwood, TN Singapore New York, NY
has completed a majority has been acquired by received a strategic has been acquired by has been acquired by recapitalization with investment from has secured an early stage funding round a portfolio company of
Boston, MA and San Francisco, CA Chicago, IL Tokyo, Japan Palo Alto, CA Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as exclusive strategic and financial exclusive strategic and financial exclusive strategic and financial strategic and financial advisor to exclusive strategic and financial exclusive strategic and financial advisor to BillingTree advisor to iTransact Group, LLC advisor to Xignite. Agilum Healthcare Intelligence. advisor to Crayon Data. advisor to Alacra.
has sold the assets of Paris, France Campbell, CA Boston, MA New York, NY Dublin, Ireland
has acquired the Business Process received an investment from has been acquired by has invested in has been acquired by Management business from
to
Palo Alto, CA Windsor, CT Dublin, Ireland London, United Kingdom Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as exclusive strategic and financial exclusive strategic and financial exclusive strategic and financial financial advisor to Aquiline Capital exclusive strategic and financial exclusive strategic and financial advisor to Everteam. advisor to Trunomi. advisor to Varden Technologies. Partners. advisor to CNO Financial Group. advisor to Information Mosaic.
Proprietary & Confidential 112 Clients Choose Us To Advise Them On Their Most Important Strategic Moves
London, United Kingdom San Francisco, CA Vienna, Austria Campbell, CA Vienna, Austria New York, NY
invested in has led a $60 million investment in received a majority investment has been acquired by has acquired has entered into a strategic from alliance with
London, United Kingdom New York, NY New York, NY Englewood, CO New York, NY New York, NY Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as exclusive strategic and financial exclusive financial advisor exclusive strategic and financial exclusive strategic and financial exclusive strategic and financial exclusive strategic and financial advisor to CIT Growth Capital. Francisco Partners. advisor to AIM Software. advisor to Infonetics Research, Inc. advisor to AIM Software. advisor to Alacra Inc.
Private equity funds managed by Hong Kong, China Lucca, Italy Wixom, MI Washington, D.C. Blackstone and by the Goldman Sachs New York, NY Merchant Banking Division (together, has raised capital from secured a $36 million investment has acquired has been acquired by the “Sponsors”) have agreed to acquire has been acquired by from
from affiliates of Kohlberg Kravis Roberts & Co. L.P. Hong Kong, China Milan, Italy Hamilton, NJ London, United Kingdom Palo Alto, CA Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as exclusive strategic and financial advisor to exclusive strategic and financial exclusive strategic and financial exclusive strategic and financial Marlin & Associates advised the strategic and financial advisor to The Wisers Information Limited. advisor to Tagetik Software srl. advisor to RevSpring Inc. advisor to Current Analysis, Inc. Sponsors. Frayman Group, Inc.
has sold
Woburn, MA Port Washington, NY New York, NY New York, NY
has been acquired by has acquired secured a $53 million has been acquired by Chicago, IL a portfolio company of Bain Capital investment from to Ventures and Lemhi Ventures has merged with
Chicago, IL Boulder, Colorado Stockholm, Sweden New York, NY London, United Kingdom Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as Marlin & Associates acted as exclusive strategic and financial exclusive strategic and financial exclusive strategic and financial exclusive strategic and financial exclusive strategic and financial exclusive strategic and financial advisor to ByAllAccounts, Inc. advisor to NPD Group. advisor to MarketAxess. advisor to Bain Capital Ventures. advisor to SR Labs. advisor to Knovel Corporation.
Proprietary & Confidential 113 About Marlin & Associates
Founded more than 15 years ago, Marlin & Associates is a boutique investment banking and strategic advisory firm specializing in acquisitions and divestitures of U.S. and international middle-market firms that provide leading technology, business information services.
M&A's professionals have advised on more than 200 successfully completed transactions in the financial technology and information services sector. The firm has been named “Boutique Investment Banking Firm of the Year”, “Cross-Border Boutique Investment Banking Firm of the Year”, “US Boutique Investment Banking Firm of the Year”, “TMT Advisory Firm of the Year”, and received numerous "Deal of the Year” awards.
New York City | Washington, DC | San Francisco | Toronto, Canada
Proprietary & Confidential 114 Tech M&A Update
Presented by:
George Takach Veronique Wattiez-Larose Pavan Jawanda
April 2017 Emergence of Private Equity in Tech M&A 116
Historical Observations ¬ Technology sector not as attractive for PE due to instability in cash flows ¬ Budgeting and FP&A very difficult for tech companies, especially when leveraged financing was involved ¬ Valuation challenges; exit timing uncertainties introduced fund compliance issues ¬ Collateral packages were more challenging to implement due to the lack of tangible assets ¬ Robust IPO market for tech companies often provided a better exit platform than a sale to financially disciplined PE buyers
Current Market ¬ Significant amount of “dry powder”; Canada is a prime target ¬ More portfolio company synergies, particularly in fintech, AI and SAAS ¬ Confluence of “private equity” and “venture capital” ¬ More robust credit markets – even to finance “asset-lite” tech businesses ¬ Prevalence of competitive auction processes in Canada – PE bidders often solicited to introduce competitive tension with strategics ¬ IPO market for tech companies has slowed down recently; concerns have emerged about valuation and liquidity to provide a platform for future sales by founders and early stage investors
117 Representations and Warranties Insurance in Tech M&A
Objectives ¬ Often used in lieu of (or as a supplement to) a traditional indemnity structure ¬ Historically a U.S. PE tool, particularly pushed by PE sellers that needed proceeds certainty for LP distributions – now used more frequently by strategics and is trending in Canada
Advantages for Buyers ¬ Can distinguish a bid in an auction setting ¬ Helps preserve positive relationships with staff and founders ¬ For tech companies, where there could be dozens or hundreds of employee shareholders, this can be vital to future success ¬ Creditworthy backstop for claims
Advantages for Sellers ¬ Certainty of proceeds ¬ No (or limited) contingent liabilities ¬ Protects passive sellers
Issues in Tech M&A ¬ Problematic reps in tech deals: ¬ IP infringement; open source; valid invention assignments and moral rights waivers; sufficiency of assets ¬ Issues around “knowledge” qualifiers – does this create a “fraud” standard for recovery? ¬ Actual knowledge exclusions in policies that could also prevent recovery
118 Drag-Alongs: Implications of Cigna in Canadian Tech M&A Cigna v. Audax Health Solutions ¬ The 2015 Cigna decision by the Delaware Court of Chancery still has private M&A practitioners concerned ¬ Involved a merger agreement for a private target (to alleviate the requirement to obtain hundreds of shareholder signatures) – similar to an amalgamation or plan of arrangement for a Canadian company ¬ Court held that certain shareholder obligations and agreements imposed through a letter of transmittal were not enforceable against shareholders ¬ Cigna was related to customary shareholder releases and indemnification obligations (indemnification by the shareholders for up to their pro rata share) ¬ For tech companies that have a large shareholder base (through seed, angel, venture capital and employee financings), the Cigna decision could have significant implications for M&A transactions and deal certainty
Lessons ¬ Cigna was a U.S. case but its impact in Canada is yet to be seen – many BC practitioners had reservations about the enforceability of drag-along rights so resorted to amalgamations or plans of arrangement for transactions involving a large number of shareholders ¬ Very tightly drafted drag-along provisions and consideration are critical! ¬ Key items for drag-along provisions: ¬ Agreement to indemnification obligations ¬ Agreement to provide releases (very important for tech companies if they need to cleanse legacy IP assignment and release issues that weren’t addressed in original employment agreements) ¬ Waivers of dissent rights (although some courts have questioned the enforceability of these as well) ¬ Many shareholder agreements do not address asset sales could be detrimental for tech deals, particularly when spinning out a division ¬ Grant of irrevocable power of attorney or voting agreement in favour of company ¬ Must ensure the shareholder agreement gets signed up for any stock options that get granted or exercised. This is often overlooked in a rapidly growing tech company. The Québec Perspective 119
¬ On board with disruptive trends ¬ Strength of PE players ¬ Inevitable politics!
Questions
McCarthy Tétrault LLP / mccarthy.ca Closing Remarks George S. Takach
McCarthy Tétrault LLP / mccarthy.ca TECH BREAK UPS ARE HARD TO DO
By George S. Takach
There are a lot of tech companies in the M&A market currently. The buyers have healthy balance sheets, and want to deploy that cash by beefing up their product offerings, or expanding internationally, or by filling what they perceive to be a strategic hole.
Interestingly, though, there’s also a fair amount of tech company divestiture going on. A good example is eBay’s recent spin out of PayPal. The former bought the latter for US$1.5 billion in July, 2002 – at the time considered a very hefty sum for an online payment company.
Thirteen years later, on its first day of trading as a spun out, separate company, PayPal’s shares closed at US$41.63, valuing the company at a cool US$50.8 billion. All that on the strength of 169 million customers in 200 countries.
The rationale for the PayPal divestiture was several fold, but a key one being to let the company take flight without being held back by eBay and its different business model. This is a familiar theme. Years ago IBM spun out Toronto-based Celestica, which is now a global electronics manufacturing company. When it was an IBM division, building hardware products for Big Blue, it tried to land meaningful product manufacturing mandates from IBM’s competitors – but this was difficult to do given the all too often conflict of interest between the prospective customer and IBM. When Celestica was hived off as a separate entity, it immediately began to undertake work for third parties that simply would not consider becoming customers of IBM prior to the divestiture.
Today, Celestica is a global custom tech manufacturer, with operations and customers around the world – but its headquarters is still in Toronto. Its spin out from IBM has been a good news story for the Canadian tech sector.
Splitting the Business(es)
If the rationale for tech divestitures is usually straightforward, the commercial, legal and contractual dynamics of the spin out deal can be quite complex. First, there is the difficult exercise of separating the intellectual property.
Obviously where there are patents, or software code, that are used exclusively in one or other business, it’s a simple “either/or” decision: whichever post-divestiture entity is the sole user of the particular IP prior to the split, simply gets an assignment of it and owns it going forward. So much IP today, however, overlaps both businesses and is used by both. In that case, the ownership is typically lodged with one entity, and the other is granted a sophisticated license. But the license terms can be tricky.
One sticking point is the degree of exclusivity in the IP being given to the divested entity by the company keeping ownership. On the one hand, the entity being spun out needs a solid tenure in the IP if it hopes to stand a chance in the harsh light of day of international IP wars (especially in the all important US market, where patents are the thermonuclear weapons of the modern era). On the other hand, however, the company continuing as the IP owner doesn’t want to inadvertently create a menacing competitor in the former affiliate.
MT DOCS 14699428v1 - 2 -
So these licensing negotiations, coupled with complex restrictive covenants, can be finicky indeed. I had one a while back in the so-called “Fintech” space (a contraction for “financial technology” – essentially, tech products and services aimed at facilitating financial transactions). A core definition in the negotiations became “banking”, and one party wanted exclusivity in the “banking sector”. You would think that would be a fairly straightforward matter. Well, you would be wrong.
The term “banking” was fairly straightforward 30 years ago, and was essentially associated with deposit taking institutions. Today? Nowadays it’s a very amorphous concept. For example, if banking includes the transfer of money, which it surely does, then what about all the money transfer services that exist today – are they “banks” as well? You see where this is going. Bottom line, in today’s app infused business world, particularly in B2C commerce, a phrase like “banking” is actually fiendishly difficult to define for purposes of a post-divestiture non-compete covenant.
Joint Ownership
Sometimes the entity being divested believes its rationale for owning the applicable software code is as strong as the soon-to-be former affiliate; that is, the entity being spun out is not satisfied merely with a license (which, after all, is only a contract right, and is susceptible to contract breach, and is not as strong and enduring as a property right). As a result, the negotiations drag on, and each side digs in its heels, insisting it should have ownership of the IP, and the other only a license.
On more than one such occasion, I have cut this gordian knot by using the concept of “joint ownership”. This is a fascinating vehicle in the software world. Essentially, each entity is given the same property ownership right to the underlying IP to the full extent afforded by the Copyright Act, without having to account to the other party. In practical terms, each party has its own copy of the software (including source code, and all the crown jewels), and goes on its own, separate way.
Over time, however, each party makes its own modifications and additions to its respective copy of the IP; so, eventually, the two “clones” of the software product (which started as exact look-a- likes) diverge and become, in some cases, quite unrecognizable, one from the other.
The upshot of the joint ownership mechanism, though, is that a much stronger interest (than merely a “license”) is given to the divested entity, and this in turn has sometimes been the difference maker in the deal: if the only option on the table was a license to the divested entity, either the deal would not have closed, or at a materially different valuation. Therefore, for these sorts of finicky, delicate situations, keep in mind joint ownership – a handy tool indeed in the right circumstances.
Transition Services
It is often the case that the entity being spun out cannot support itself from an administrative perspective for some period of time after the closing of the divestiture. Frequently, for example, there are complex IT systems and databases that the entity is reliant on, but that cannot be immediately replicated for the new, stand-alone entity.
Frankly, this is the situation frequently even when the division being spun out is being acquired by a friendly acquiror. For example, all the databases of the spun out entity run on Oracle, while
MT DOCS 14699428v1 - 3 - the buyer is an SAP shop. So, bottom line, the spun out entity will need to rely on its old affiliate to support it with Oracle-related services (so-called “transition services”), until arrangements can be made to transition over to the SAP environment. This entails some key questions.
An important one is, what should be the duration of these services? The short answer is, it varies, depending on just how long it takes to do a careful, prudent transfer. You don’t want to rush things – but neither do you want to prolong the interim relationship. For example, the supplier of the services wants them to end in three months, while the divested entity, just to be on the safe side, wants nine months.
One way to solve this conundrum is to provide for nine months, but to have a material price hike for the services at three months and six months. This will serve as a meaningful incentive for the services recipient to transition off the supplier just as soon as possible – but, if it truly needs the extra time, it can count on it.
Another critical question in these transition agreements is what is the appropriate quality benchmark for the services? The divested entity will argue for commercial terms, with performance metrics – what are often called “Service Level Agreements” – the order of the day. In an ideal world, the divested entity will also have express remedies it can call upon for a failure of the supplier (the previous affiliate of the divested entity) to meet the required performance metrics, such as liquidated damages.
The supplier, for its part, is not keen on such a regime. It argues that, essentially, it is reluctantly providing these interim services as an accommodation to the divested entity, and that it is not in the business of normally providing these services to third parties – and therefore holding it to commercial standards is not reasonable.
The compromise often arrived at between these two extremes is that a standard of performance is agreed to, but it is a fairly low one – namely, that the supplier has to provide the divested entity with the same level of service it provides to itself. Put another way, if there is some resource that is in short supply at the supplier, it cannot be allocated in a manner that favours itself over the divested entity.
A third issue relates to what type of access the staff of the divested entity can have to the systems of the supplier who, you’ll recall, was previously an affiliate of the divested company. But that is no longer the case, and the two bodies are now third parties, dealing with each other at arm’s length.
This means, in some cases, that the supplier cannot afford the divested entity’s staff access to the systems of the supplier – such access is prohibited by the supplier’s licence agreement with its third party software licensor. This can quickly become a material cost issue, as the licensor demands an additional payment for allowing access by the divested entity’s staff. This increasingly common scenario illustrates the benefit of adding into the initial licence agreement a provision allowing the licensor of such software to use it on behalf of a former affiliate for an interim period of transition, at no additional cost.
These are but three of the salient issues that arise in these important transition services agreements. There are many more. Twenty-five years ago, these agreements were about five pages long. Today, with schedules, they come to about 50 pages. That is a reflection of how critical these arrangements have become – and it is proof that tech break ups are indeed hard to do.
MT DOCS 14699428v1 LEGAL CONSIDERATIONS FOR DATA BREACH PREPAREDNESS
By George S. Takach
It is a sign of the technological times that we live in, that when I speak to clients about “future data breaches”, we no longer use the word “if”, but rather the more certain “when”. Alas, it really is just a question of time before your business or organization joins the ranks of the many others who have experienced a data breach incident.
The reasons for this state of affairs are fairly obvious. To begin with, virtually all information today is in digital form, and stored in a computer somewhere. Ironically perhaps, the old practice of recording data on paper, and keeping the paper in locked filing cabinets, was actually quite a safe environment from a data theft perspective.
Nowadays, however, not only is the data digital, and stored on computers, but the computers are all networked together and plugged into the Internet. Indeed, if you were a criminal and wanted to design a system vulnerable to your bad behaviour, today’s Internet enabled world is pretty much your nirvana.
Of course we have technical measures which attempt to thwart the cyber hackers and data thieves, but they all have their limitations and shortcomings. And computer users today don’t help themselves either – studies show the most popular passcode today is “123456” – we’re not talking super strength cryptography!
Therefore, data breaches are becoming ever more inevitable. Moreover, in the current environment, it is very likely that a material data breach today will be followed by one, or other, or both, of the following types of litigation brought against your organization. One will be a class action brought on behalf of all customers (or other users of your website) and other persons adversely affected (or potentially affected) by the breach. The second, if your company is listed on a stock exchange and your share price dropped on news of the data breach, will be a lawsuit on behalf of shareholders alleging that your company’s disclosure as to cyber risk was inadequate or misleading.
These types of litigation are expensive, and not just in terms of settlement payouts, costs of legal counsel and experts, and the significant management time and distraction. The reputational harm can be very important as well. So, what steps can you take now – before the data breach – to reduce the fallout from this risk? The good news is there are some practical, discrete actions you can do right away, in advance of the incident. They won’t bring the risk to zero – but they will help materially manage the risk.
Pre-Breach Public Disclosure
If you are with a public company (and many Canadian public companies are “inter-listed”, in that their shares trade on a US stock exchange as well as the Toronto Stock Exchange), you should be providing reasonable disclosure about data breach risks in your prospectuses, annual information form, and other continuous disclosure documents.
In Canada, the instructions to Form 51-102F1 (Management Discussion and Analysis) require a discussion of risks that have, or could have, impacted financial statements, which would encompass many data breach situations.
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In the US, the SEC has published guidance for cybersecurity risk disclosure, which could include: aspects of your business that give rise to material risks for data breaches; the degree to which you outsource those risks; a description of previous data breaches; particular risks if the breach incident is undetected for a period of time; and any relevant insurance coverage.
In contemplating your approach to data breach risk disclosure, of course keep in mind that you don’t want this disclosure to ironically assist the bad guys who are planning to unleash the cyberattack against you – so, care and judgement, and legal review, need to inform this disclosure.
Board of Director Oversight/Risk Management
Your Board of Directors has an important role to play in your data breach preparedness programme. Last year, SEC Commissioner Luis Aguilar spoke to the New York Stock Exchange about cybersecurity risks in the boardroom, noting that cybersecurity incidents have become more frequent and sophisticated, and also more costly to companies. He emphasized the role of boards of directors, noting that “ensuring the adequacy of a company’s cybersecurity measures needs to be a critical part of a board of director’s risk oversight responsibilities.”
Courts have also begun to consider the role of directors in managing cybersecurity risk. Recently, an American Court dismissed a shareholder derivative suit that sought damages from the directors and officers of a public company for several data breaches. This decision is the first decision issued in the United States in a shareholder derivative claim arising out of a data breach. The decision provides examples of approaches to data breach risk oversight that directors and officers may implement to help shield them from liability in the context of data breach.
The following sets out some examples of steps that could be considered by management and boards of directors in identifying and assessing an organization’s cybersecurity risks. First, adopt written cybersecurity policies, procedures and internal controls, including when and how to disclose. As well, implement methods to detect the occurrence of a cybersecurity event.
Second, management and board members should discuss the appointment of a chief information officer or a chief information security officer with the expertise to meet regularly with and advise the board. Equally, consideration could be given to appointing a board member with cybersecurity expertise and experience (or the board should seek out an expert who can provide presentation(s) to the board in this regard), and to appointing an enterprise risk committee.
Third, the board should review annual budgets for privacy and IT security programs. The board should also receive regular reports on breaches and cyber risks. As well, the board should have a clear understanding of who in management has primary responsibility for cybersecurity risk oversight and for ensuring the adequacy of the company’s cyber-risk management practices.
Fourth, the role of insurance needs to be explored. There are now a range of new insurance products addressing cyber risks. Accordingly, consideration should be given to which risks are to be addressed and mitigated directly and which may be transferred through insurance.
Finally, as part of the Board’s risk management mandate for data breach preparedness, consideration should also be given to ensuring compliance by the organization with any
DOCS 14862391v1 - 3 - applicable regulatory guidance, such as that from bank regulators if your organization is a financial institution. For example, if you have operations in the United States, you may have to deal with the Federal Trade Commission from a general privacy regulatory perspective; in Canada the equivalent would be the Privacy Commissioners in Ottawa (for the Canadian federal privacy law) and in BC, Alberta, Manitoba and Quebec for provincial counterparts. And if your organization uses payment cards, then you need to be current on the guidance in this area from the Payment Card Industry Security Standards Council, and particularly their PCI-DSS requirements. The key point of all of the foregoing is that an important element in showing in any subsequent litigation that you discharged the all important requisite “standard of care” (and therefore you are able to mount a robust “due diligence defence”), is to be able to prove your actions were consistent with industry best practices, as found in regulatory pronouncements.
Legal Components of the Data Breach Preparation Plan
Another pillar of shoring up your risk mitigation strategy is to create – and to keep up-to-date - a robust data breach preparation plan (“DBPP”). The DBPP should cover a number of operational items. But it should also address the following legal considerations.
The first step in addressing legal considerations in and around your DBPP, is to evaluate your organization’s legal risk profile regarding data breaches. For example, is the organization in an industry with a regulatory framework that dictates certain cyber-protection measures? For instance, for an organization in the financial services industry in Canada, your organization will have to comply with existing and emerging regulations promulgated by OSFI, IIROC, and CSA.
Other questions include: does the organization do business in multiple jurisdictions? Where is it collecting, processing, and storing data? Is the organization a private company, or a public company with many shareholders and subject to stock exchange oversight? Will the organization be handling personal information and/or personal health information? If so, existing and evolving privacy protection laws will come into play. If an IT solution has been contracted for, is it B2B or B2C? And will the IT solution involve third party components such as hosting or payment providers?
In a similar vein, in order to craft a legally sound DBPP, you need to understand your IT environment, and in that regard, the ecosystem you have of vendors (of IT but also other services) who have access to your own IT systems and organizational data. The following regarding vendors illustrates some of the key questions that should inform this stage of legal due diligence. What is the state of the vendor’s security framework? What policies and procedures does it have in place to maintain the integrity of the framework? Will the vendor permit penetration testing and other exploration of vulnerabilities? Are the vendor’s facilities audited for industry-recognized internal controls? Does the vendor perform internal audits, and is it willing to share the results with you? Where are the vendor’s service delivery centres? Where does it process and store data? And what data breach risk insurance does the vendor carry, and has it made any claims in the last five years?
Having assessed your organization’s legal risk profile for data breaches, you can now proceed to craft an appropriate DBPP with the other departments and units of your organization. In terms of what should be in the DBPP, and how you should handle an actual data breach when it arises (note, again, not “if”, but “when”), to those important topics we turn in our next column.
DOCS 14862391v1 LEGAL CONSIDERATIONS FOR DATA BREACH PREPAREDNESS (2)
by George S. Takach
Last issue, I looked at the steps organizations should be taking to prepare for data breaches (with the operative imperative being in order to prepare not “if” the data breach occurs, but “when” it occurs). I ended the column with the call to arms that every organization should prepare – and keep up-to-date – a robust Data Breach Preparation Plan.
Before turning to what should go into the DBPP, it is worth understanding a number of parameters surrounding data breach litigation cases. To this end, this column discusses the findings of a groundbreaking research project in the United States that, based on an empirical analysis, studied 1,772 data breaches that occurred in the US between 2005 and 2010, and the 230 federal lawsuits that emanated from these data breaches.
A Dizzying Array of Causes of Action
The first observation worth making about these cases is that plaintiffs’ counsel is becoming expert at crafting a wide range of causes of action in data breach circumstances. The research identified no fewer than 86 discrete theories of liability, which included (in order of frequency): breach of unfair state business practices statute; negligence; breach of contract; fair credit reporting statute; privacy statute; privacy torts; electronic communications privacy statute; driver privacy protection statute; breach of duty; unjust enrichment; the US Constitution (4,5,9, 14); conversion; misrepresentation; computer fraud and abuse statute; breach of good faith; declaratory relief; state constitution; breach of warranty; emotional distress; civil rights statute; fraud; freedom of information statute; video piracy protection statute; and trespass to property. So, the plaintiff toolkit is very robust.
At the same time, however, not every data breach results in a litigation claim. Therefore, the research asked the key question – what factors increase the likelihood of a lawsuit?
The More Records, the More Lawsuits
It turns out the research data uncovers a number of conclusions about when it is more likely that a data breach ends up in litigation. One of the most prevalent factors is the number of records implicated.
In short, the greater the number of records that were disclosed in an unauthorized fashion, the greater the likelihood of the breach resulting in litigation. Bottom line, the research found that a 10 times increase in the number of disclosed records increases the probability of a lawsuit by 8%. For example, the research found that the mean number of records in non-litigated data breaches is 98,000; but for those that are litigated, the mean number of records is 5.3 million.
This finding has important implications for your organization. It means you have to analyze your databases, and understand which ones are most vulnerable, and the relative size of each. Obviously, your “hardening” measures should be implemented for all of them, but if you have some very large ones, you should expend extra effort on protecting them.
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Different Types of Data Make a Difference
The research also concluded there was a heightened correlation between the type of data that is compromised, and the likelihood of ensuing data breach litigation. For example, breaches involving financial data, and especially credit card numbers, generated the highest likelihood of subsequent litigation. One driver for this result is that in the US the Gramm-Leach-Bliley and Fair Credit Reporting statutes mandate fairly strict security controls, while the collection and sharing of credit card data is strictly governed by contracts administered under the Payment Card Industry Data Security Standard.
Again, therefore, the lesson from this finding is the requirement for situational awareness and action – namely, if you are dealing with financial information, and especially credit card data, you have to be thinking in terms of an extremely robust level of security for that data. The same also goes for medically-oriented data, given that the US Health Information Portability and Accounting Act also prescribes a fairly stringent set of requirements, including patient consent, before health information can be shared across healthcare facilities.
What Caused the Breach?
The research shows that it matters to prospective plaintiffs (and their legal counsel) what the actual cause of the data breach was. In the survey period (2005-2010), lawsuits were more likely to follow when there was a highly negligent act, such as mistakenly throwing tax records into a dumpster, than when there was an attack on the organization’s computer network by a hacker. Presumably, the former was considered more a “fault” of the organization than the latter, with the startling result that the improper disposal of data is three times as likely to lead to litigation, relative to when the data is stolen.
I wonder, however, whether this distinction is as clear cut in the 2010-2015 period. Over the last five years, the mechanisms for managing external threats over the Internet have improved, such that a series of best practices for this have developed – witness the cybersecurity policy issued by the federal Office of the Superintendent of Financial Institutions in Ottawa. On the other hand, the number of hackers has increased as well, and their expertise is improving, with the result that the number of data breach incidents has increased markedly over these past five years relative to the previous half decade; for example, in the US, during 2006-2010, there were an average of 805 data breaches a year, while in the 2011-2015 period, the number increased to 1,411 a year.
What Type of Harm?
The research also shows that it matters what type of harm actually befell the plaintiffs. Most critically, if actual financial harm was experienced, particularly through identify theft, then that led to a much more likely litigation result. Interestingly, the research uncovered that 22% of the federally-litigated breach cases in their 2005-2010 sample involved financial loss (while 78% did not). Considered from another perspective, the results of the research indicate that the likelihood of a company being sued increases by a factor of 3.5 when its customers experience actual financial harm.
By the same token, the likelihood of litigation drops by a factor of six if the organization provides free credit monitoring promptly after the data breach. This is why, for example, one often sees the express remedy of the provision of free credit monitoring hard wired into an outsourcing agreement between a financial institution customer and its IT services provider, with the remedy
MT DOCS 15011441v1 - 3 - to kick in immediately upon the service provider experiencing a data breach that impacts the customer’s client data. Indeed, for some time now, it has been considered a standard, best practice to have credit monitoring commence immediately following a data breach (for example, this is recommended by the US Federal General Accountability Office).
From Claim to Settlement
Relatively few litigation cases actually proceed to trial, and in this respect data breach litigation is not much different than other types of lawsuits. However, the research also considered what factors particularly drive settlement in the data breach space.
The research found that 76% of the data breach litigation cases in their 2005-2010 study period were class actions. Moreover, successful certification as a class results in a 30% greater likelihood of settlement. Again, this is perhaps not surprising. More interesting, though, is the finding that plaintiffs are also 30% more likely to settle when they experience financial loss.
It is important to note that the lack of a finding of identity theft is one reason often given by judges in dismissing a data breach lawsuit. That is, the court is not convinced that a sufficient “actual” harm has occurred to warrant the litigation. At the same time, however, particularly if the class is able to get certified, often the defendant settles simply to avoid the additional costs of litigation, or to attempt to stop the negative publicity, or merely because the litigation has taken a significant amount of senior management’s attention that could be put to better, more productive use.
It is also worth noting that the likelihood of settlement increases 10 times in the case of hack attack caused breaches, when contrasted with hardware items that are stolen or lost. And in terms of the sensitivity of data, when the litigation relates to medical data there is an increase of 31% probability that the case settles.
As with most class action litigation, one cannot underestimate the importance of class action litigation lawyers, who tend to propel these cases forward. The research was able to ascertain that the mean payment to plaintiffs’ legal counsel for a settled class action data breach case was $1.2 million, with the maximum being $6.5 million. At the same time, the mean award to members of the class was $2,500, with most settlements providing roughly $500 per plaintiff. In many cases, the total amount of financial redress per claimant is so small that the bulk of the award (after satisfying plaintiff counsel fees) was paid to charities.
The Volume of Data Breach Lawsuits
Overall, the research found that in the 2005-2010 period, only about 4% of data breaches resulted in litigation claims. This is fairly consistent with the findings for litigation rates in other types of personal injury litigation.
It is interesting to speculate, however, whether this percentage, in Canada, will rise with the relatively new mandatory breach notification requirement that was added to Canada’s federal privacy law in mid-2015. Also, from a potential litigation perspective, the recent amendments to PIPEDA now require companies to keep track of the precise records implicated in a data breach. Again, presumably this will assist plaintiff’s legal counsel in the mounting of data breach litigation claims.
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Regardless of the specific drivers of litigation in the data breach space, there is no doubt that you will be better prepared to manage that risk if you have a robust Data Breach Preparation Plan, and it is to that item we turn next month.
MT DOCS 15011441v1 Legal Considerations for Data Breach Preparedness (3)
By George S. Takach
In the two previous columns I looked at the various factors you need to consider before you can meaningfully craft your Data Breach Preparation Plan (DBPP). Now you’re ready to put together this all important playbook, that sets out who does what when that gut wrenching realization arrives – “we’ve been hacked”.
Who’s On the Team
I know it sounds trite, but the DBPP has to list who is on the data breach response team. Clearly, IT security and IT operations people are; as is the Chief Privacy Officer; and so is in-house and external legal counsel. But you also have to be thinking about representatives from public relations, operations, and typically compliance if you are a financial institution.
You should also have on speed dial a reputable and experienced data forensic investigator. This is the crack team that is brought in, very early on, to assess the nature, and extent, of the data breach. The forensic investigators will assess what data, exactly, was accessed by the unauthorized third party. They will then determine whether such data was copied and removed from your servers.
In many cases, the forensics experts will also advise as to what precise measures you can take to contain the data breach. This means giving these investigators very prompt and full acces to your complete computing environment. In turn, the forensics people need to know how to handle the technical environment so that digital evidence is preserved in a manner that makes it useable in any subsequent civil or criminal legal proceeding.
Preserving Legal Privilege
One important element the DBPP should allude to is the question of maintaining and preserving legal privilege. I was recently retained on a data breach where the scope of the mandate included an analysis of the potential legal liability flowing from the breach. In this case, I retained the forensic expert to assist me, with the result that the materials prepared by them for me (which was then used as input to the legal assessment of liability) would be subject to legal privilege. This was important in the context of any subsequent litigation that might be brought against my client flowing from the data breach.
Incidentally, it is also worth noting that once a data breach comes to light, the DBPP should remind the response team that all relevant evidence must thereafter be preserved. Therefore, at that point, even if you have a company-wide policy of periodic deletion of emails (for example) that are a certain number of months old, that policy must be suspended in favour of preserving everything henceforth.
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Patching Vulnerabilities
There is one other role often played very usefully by the data forensics team – namely, a determination of what vulnerabilities exist in your IT and other systems that should promptly be repaired. Put another way, they are not brought in just to review what went wrong “this time”, but also to advise as to what can be done to reduce the risk of a similar incident in the future.
It is for this reason, that when I’m asked to recommend a forensics expert to a client, I like to suggest a shop that can do the data sleuthing, but then can also bring IT design skills to the mandate for this broader, IT development role. In short, you have to do meaningful due diligence on your technical experts, well before the data breach incident, so you are not running around in a panic at the time a data breach hits you.
Who to Notify – And When?
Once you have the forensics report in hand, you now have visibility into the scope and nature of the data breach, and you will be able to address one of the most sensitive steps in the DBPP: who do you notify, and when, and what exactly do you say? Given that at this point in the breach you are probably running on very little sleep in the 2-3 days since the breach was first detected, it is extremely helpful for the “data breach playbook” to set out the specific steps to be taken at this point.
With internal and external legal counsel in the huddle, a principled decision can be made as to who is notified, and how. And remember, the list may be longer than simply your customers. If the hacker got into your company’s HR system, then employee data may be compromised.
As for who to notify, if there is a risk that the hacked data would lead to material financial or health-related harm, then in Canada one thinks seriously about alerting law enforcement. And even if this factor is not present, there is the fairly new requirement for mandatory breach notification in the recently amended federal data protection law, so long as the breach meets certain criteria.
If you have customers from around the globe, the DBPP will tell you that your job in terms of notification is more complicated. What does the data breach notification legislation say in each US state where you have customers? What about the different countries of the European Union? Again, the DBPP should be clear on all this beforehand, so that you’re not just starting to figure all this out when you are under the time pressure of an actual breach incident. Forewarned is forearmed.
The Insurance Question
Another item in the DBPP that requires some serious advance work is related to insurance. Again, on the assumption that it is only a matter of time before your organization is hit with a data breach (and not “if” you will be hit), it really does behoove you to review what insurance coverage you have currently for the kinds of risks that arise when hackers get into your computer systems.
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As part of this review, you need to understand your “first party” liability – what costs, expenses and damages would befall your organization? But then you need to consider the “third party” liability issues as well – what damages would impact your customers, or business partners, if you were compromised (but their data, stored on your systems, was impacted)?
What’s clear from the litigation over insurance coverage, is that many traditional policies don’t really apply to the new cyber risks. The insurance policy is often more oriented to the 20th century world of physical risks, and the so-called digital realities of the 21st century simply haven’t been reflected in the policy. If this is your case, you need to consider what more “modern” fact patterns cyber risk policies might cover, and whether the cost of their coverage is worth it for you. And again, like several of the other issues raised above in the DBPP, it’s too late to be doing this risk management assessment once the hackers have compromised your systems –just as you really cannot buy insurance for a burning house.
Testing the DBPP
I like to say to clients, “if you have a DBPP, and you haven’t tested it in the last six months, you actually don’t have a plan.” This is so, because, frankly, no plan that is simply on paper can really capture all the nuances and twists and turns of the real world.
For example, your DBPP may well have a 9-5, Monday to Friday dimension built into it. Well, the sad reality is that a lot of hackers operate in the evenings and week-ends. So, your test will tell you just how many people you need as back-ups to the key names listed in the DBPP. And possibly back-ups to the back-ups. You get the idea. And, by the way, you should run the test on a week-end.
The results of the test of your DBPP should be discussed at the highest levels of management within your organization, possibly even at the Board. As I’ve mentioned in the previous columns, the overarching issue of cybersecurity, and the risk management processes and controls that should be developed and implemented for it, are very much topics for C-suite and Board consideration.
To be clear, a DBPP – even one that is tested periodically – is not a silver bullet, it is no panacea. And the evidence indicates – as covered in my two previous columns – that the hackers are getting smarter and more determined. But in a world where data breaches are as prevalent as they are, the DBPP is an important tool with which to manage an important risk facing you.
In conclusion, the unfortunate reality is that your organization is now so digital and networked that while this brings great benefits to you, it also makes you very vulnerable to modern day criminals. Therefore, part of the significant financial benefits offered by computerization need to be invested in a robust Data Breach Preparation Plan, so that you can at least partly mitigate the adverse side effects of our digital world.
MT DOCS 15092482v3 BOARD/PUBLIC AGENCY OVERSIGHT OF THE NEW TECHNOLOGIES
By George S. Takach
As 2017 begins to unfold, it is clear that a number of technology developments will continue to impact the Canadian economy, and public sector agencies in this country. So it’s timely to highlight these, but then put them in the context of what your organization – whether in the private or public sector, should be doing to better manage them.
SMAC and More
One acronym that captures four of the disruptive technologies is SMAC – which stands for Social, Mobile, Analytics and Cloud. Let’s look at each in turn.
Social media is working its way into every nook and cranny of the economy, and society more broadly speaking. Marketing, for example, is being changed fundamentally by digital channels such as Facebook. And when the final analysis of President Trump’s victory is done, I’m sure the role of his Twitter account will loom large.
The App economy, that is fueling the ubiquity of mobile, is also coming into its own. And it’s not just Uber. Virtually every aspect of human activity has an app (or several) that either enable the activity, or facilitate it, or support it in some meaningful manner. Especially for millennials and younger, the importance of the smartphone for commerce, entertainment, news, social cohesion, politics, health, and much more, cannot be overstated.
From the perspective of business and government, Analytics is clearly coming into its own. Sometimes colloquially known as “Big Data”, corporations and public agencies are harnessing the reams of personal and other information they are collecting every nano second. As they say, the “dough is in the data”. And we are starting to see a proliferation of “artificial intelligence” applications where the data is automatically mined, insights are garnered and specific actions are taken, all by means of computerized, automated processes. Picking stocks, healing the sick, predicting human behaviour, scheduling public and private transportation, predicting the weather, predicting wars, predicting buying habits, predicting elections (ok-that one is still not working well) and countless other activities, will never be the same.
Buttressing all these trends is the fact that the infrastructure of computing (and related telecommunications) has never been less expensive – and yet more powerful – because computer resources can now be fairly inexpensively produced in the Cloud. Years ago, a tech start up would be looking at spending $5 million just to buy all the hardware and software it needed to get started; now it can get the same computing power, or better, for a fraction of the cost (in the range of $500,000) in the cloud. This phenomenon is having a major impact on company creation and capital formation in Canada and all around the world. It used to be you needed at least a garage to start a start-up – now a table and chair at a coffee shop will do. The implications for the innovation sector of the economy are enormous.
Beyond the SMAC items noted above, keep an eye on the following tech developments, because they are starting to come into their own. While it may not become mainstream in highly built up urban settings, drone delivery business models in suburban and rural environments are starting to roll out – a few months ago an Amazon pilot project launched.
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Another previously seemingly sci-fi only product that is now starting to find its feet is virtual reality – and augmented reality. And in the financial services space, blockchain is being implemented in real applications by real banks – look for some very intriguing applications coming online by 2018.
SMAC Issues a Plenty
The SMAC-related technology trends for sure (and possibly some of the others noted above) are already buffeting your organization. And if they are not, it’s just a question of time, because their momentum is inexorable, whether you’re in the private or public sectors.
Here’s a short list of key issues that will be on your agenda courtesy of the SMAC oriented revolution, and the other novel tech-oriented offerings coming your way. First, your core products and services will be undergoing a major transformation, both in terms of how you organize your supply chains, and how you deal with your customers. Second, while SMAC and other novel technologies present huge opportunities for you, they also present challenges – such as cybersecurity. Therefore, applying risk management principles to SMAC-related concerns, for example, will become a core competency for your organization, and not merely if you are financial institution. Frankly, managing the legal, insurance, and reputational challenges presented by SMAC will be every organization’s business.
C-Suite Executive Committee/Board Oversight
Given the centrality of the SMAC/novel digital technology agenda to your organization, and the related opportunities – but also the risks presented by them, it is worth asking how your organization should approach governance of these matters from the perspective of the C-Suite Executive Committee, or the Board of Directors, if you’re in the private sector, or the equivalent executive governance bodies if your organization is in the public sector. Herewith a few thoughts on this important, timely topic.
First, a preliminary consideration about Board level expertise – you should review whether at least one person on your Board has sufficient expertise and experience in tech/IT/SMAC matters to serve as a credible “internal” resource for the Board. Many Boards are asking this very question, and a number of them are inviting onto the Board someone with very direct, and recent, experience in the tech space. This makes a lot of sense in a world where digital is clearly the way of the future.
Then there is the challenging question of how the Board should discharge its oversight function when it comes to technology. Traditionally, this was done episodically, with the focus being on a cost analysis of major IT projects.
Let me provide an example. Your organization is replacing its core IT system (for instance, if you are an insurance company, it may be your policy/claims system; if you’re a university, it may be your student information system). It is a very material project, it will bristle with new elements related to SMAC, and will cost, all in, many millions of dollars. Given its materiality, the CIO, and possibly the CEO, will be asked to give a major report on it to the Board at the outset, and then periodic updates as the project unfolds.
The focus of these reports is typically tracking expenses to forecasted spending amounts. And I’m not saying cost is not an important element for tracking purposes. But in 2017, the Board (or
MT DOCS 16212197v2 - 3 - your Executive Committee) needs to develop a much more robust lens through which to exercise oversight of a major, transformative project like this one.
New Board Metrics
The first thing the Board needs to do when a big, new IT-oriented transformation project comes before it for consideration, and probably for approval, is to require the CIO (and possibly the CEO) to outline a compelling business case for the new system. And cost is not the only metric to be taken into account.
In addition, the Board should want to know how the new IT system is going to impact (ostensibly very positively) the procedures and processes of your organization. If it’s a customer facing system, how is customer satisfaction being measured – and then that metric needs to get reported regularly to the Board (along with a range of other related and additional metrics).
In effect, what the Board wants to be able to do for a major project is track its progress against the initial business case, but using factors that drive sales and profitability to your organization (or in the public sector it may be customer satisfaction with the new service delivery). Ironically, in many organizations these statistics are collected as a matter of routine, but they are not distilled and shared with the Board. They should be.
Institutional Digital Capability
It’s not enough for the Board (or the Cabinet Committee) to exercise careful oversight in respect of your largest (or most transformative) IT projects. This is of course necessary, but it’s not sufficient, in order for your Board to fulsomely engage in oversight on IT matters. For this latter state to be achieved successfully, it should be that periodically (i.e.- at least once every six months), the Board is reviewing how well management is doing across all its major projects. This can be structured in the format of a “dashboard”. Ironically, such a dashboard often already exists in the organization, or at least can be collated relatively easily; now the exercise is to condense it, and make it more manageable for Board consumption.
But again, the point isn’t to simply measure cost and schedule, but to drill down into the various drivers of the business case for each of the different projects. For example, are the new digital channels drawing in new customers. Or, in the public sector, are the new public tools for engagement with stakeholders leading to higher “customer” satisfaction rates. In short, what is the tangible, concrete benefits and advantages from the new digital mechanisms that are being deployed?
From this more rigorous Board oversight approach, some higher level analyses can then be distilled over time. A key question to ask: how well does our organization do large scale organizational, technological or process change in light of the new digital dynamics buffetting the company or public agency/ministry? This is a really vital enquiry, because if the answer is “not so well”, then certainly steps must be taken to rectify the situation. If you are in the private sector, and you can’t adequately adapt to the digital environment around you, someone else is going to eat your lunch (and breakfast and dinner). Proficiency in digital transformation is not a “nice to have” anymore; if you can’t do it, your organization will be relegated to the “has been” pile of history. And therefore meeting this challenge becomes a core, on-going agenda item of your Board.
MT DOCS 16212197v2 E-KIOSK CONTRACTS
By George S. Takach
It’s the Friday of the May long week-end, and as you have for some 30 years, you’re driving yourself and the three other members of your law school study group on the annual getaway reunion to a resort up north for some rest, relaxation and reminiscing. Along the way you notice a new go-kart operation has started up – and you are all game to give it a shot. It’s easily been 40 years since any of you have raced around a go-kart track. What is it about Canadian long week-ends that makes us nostalgic.
Given the inherent riskiness of go-karting, and your three decades in the legal business, you expect a written waiver document to be presented to you to sign before you hit the track. Instead, interestingly, you find yourself before a kiosk with a big electronic screen. You have to type in various bits of personal information, pay a fee, be photographed, and click “I Agree” to a waiver and release. A copy of the information, and a receipt for your payment, is then printed for you. You’re impressed with the process – but as you put on one of their helmets, you wonder – “Is this process all as enforceable as the old written release”?
30 Years of E-Contracts
The e-kiosk contracting experiencing is nothing new. For about 30 years, electronic mechanisms of contract formation have been augmenting, and in some cases altogether replacing, the analogous paper-based ones. In the late 1980’s, “Electronic Data Interchange”, or “EDI” as it was known, rapidly became ubiquitous in the business-to-business sector, as the preferred means by which goods were ordered by parties linked in the relevant supply chain. EDI presented some novel legal issues because it comprised, in effect, direct computer-to- computer communication without any human interaction.
Fax technology also raised some novel legal issues, particularly because there were different variations of technology on the fax theme. The original fax system was more like a photocopier, except that the copy was then scanned and transmitted. But in this initial model, there was a paper-based “original” of the document that typically contained a human’s “wet” signature. Then along came more advanced fax technology where the document was sent directly from a computer, without a paper version being created. This caused a few legal eyebrows to furrow.
More recently, pdf technologies have come into widespread use, and of course e-mails are today used routinely to create contractually intentioned messages. And the variations on the e- contracting theme never end. Currently, certain businesses have worked “recorded voice signatures” into their contract creation workflows, especially with remote customers. And, getting back to go-kart waivers, the use of e-kiosks is on the rise.
Generally speaking, common law courts in Canada and in other jurisdictions, have been quite content to not deny contractual effect to electronic messages just because they were electronic. But it’s not correct to say that all electronic messages can create legally effective contracts, because there is much more to any contract than the signature of the parties (whether it be in ink or in electronic form).
For instance, there still must be a clear offer followed by a clear acceptance – remember Contract Law 101 at law school. And therefore, certain back and forth communications by email do not pass contractual muster because the court is unable to discern a clear offer (or a clear
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In other circumstances the factor that can undermine the finding of an electronic contract is the fact that the purported terms and conditions were not sufficiently brought to the attention of one of the parties. For example, the counterparty was merely “invited” to click on the relevant terms, but ultimately did not have to (in order to proceed with the online transaction).
In another line of cases, fax machines automatically printed the sender’s name at the top of the fax, but courts found these not to be electronic signatures because they were not placed on the fax with the intent to create a contractual relationship. Again, assent is still a critical requirement in an electronic contracting environment.
Therefore, by way of summation, the common law will uphold electronic contracts where there is clear offer and acceptance, both parties intend to enter into a contract, and there are no counter indicating circumstances (i.e.- duress; mistake; age of minority concerns, etc.). Nevertheless, the common law did not alleviate all concerns, and so about 20 years ago a wave of law reform was initiated that ultimately resulted in each province and territory enacting legislation that helps facilitate e-commerce across a range of electronic contracting models.
Legislative Support for E-Contracts
The various e-commerce statutes in Canada help bolster e-contracting by various means. One provision stipulates that an e-signature is legally enforceable. And the definition of “electronic signature” is very broad, namely any “information in electronic form in, attached to or associated with a document in order to sign it”.
To give you a sense of just how useful this provision in the e-commerce statutes is, the Mutual Fund Dealers Association, and the Investment Industry Regulatory Organization of Canada, have both passed policies that allow their members to communicate electronically with their clients, so long as the member obtains a legal opinion to the effect that the process for the client communication utilizes a legally enforceable e-signature. I have been asked to assist with many of these requests. After working with the MFDA and IIROC member to fine tune their communication and workflow process (typically their e-oriented account opening system), I am able to give the opinion. Many different novel e-workflows have been brought on stream this way, gaining for the MFDA and IIROC member important marketing and efficiency gains; and all well supported by the above-noted e-commerce legislation.
The Legality of E-Kiosks
So what about the enforceability of the waiver and release obtained through the e-kiosk process at the go-kart track described at the top of this column? Well, just such a fact pattern was at issue in a recent case from Western Canada. And the court, on a summary judgement motion, upheld the e-waiver, based on several important findings and conclusions.
First, the judge found that the design of the customer experience through the various screens of the kiosk was such that the customer could not participate in a go-kart race unless and until he or she clicked “I Agree” to the waiver/release. Moreover, the judge found there was nothing “obscure” in the presentation of the waiver and the release, or the choice of whether or not to accept it.
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Therefore, tip number one – when designing the customer experience for these sorts of electronic contract terms (whether a waiver or for something else), keep it simple and straightforward. And the “I Agree” step has to be clear and obvious. Ideally the actual terms appear on a screen, and at the bottom (therefore requiring the customer to scroll down through the terms) there is a clear and unambiguous “I Agree” (and beside it, “I Decline”) buttons.
In coming to its conclusion, the court usefully cites another section of the relevant e-commerce legislation, namely the provision that holds that an offer, or acceptance, or any other element relevant to the formation (or operation) of a contract may be expressed “by an action in an electronic form, including touching or clicking on an appropriately designated icon or place on a computer screen …”. This is an important finding of the court. It confirms that when we are dealing with an e-contracting situation involving a tablet, a kiosk, or some similar user experience, we should not be looking for an e-signature, or something that approximates a traditional contract on paper. Rather, this statutory section stands alone, and confirms that what is really important is the intent to express the offer, acceptance or other matter, not how it is actually memorialized (though presumably the system before the court did that as well, including by taking a photo of the customer so that the “I Agree” could be connected to a specific person from an evidentiary perspective).
The second important finding by the court in the case is that the fact that the customer may not have read the waiver does not detract from the waiver’s legal effect. In this, the court argues, the electronic waiver should not be treated differently than a paper-based one. And in the context of paper, the court cites jurisprudence holding, essentially, that someone who signs a contract is bound by it whether or not they have read it (or chose not to read it).
That is not to say that anything goes when it comes to the actual words used in an electronic waiver/release, or other provisions in electronic contracts. In fact, even in this case there was a dispute as to whether the specific words of the release covered the particular damages suffered by the customer. Moreover, there are other cases, particularly in the consumer contracts setting, where judges have found certain provisions unenforceable because of their complexity, the confusion they caused, etc. Therefore, besides designing the electronic customer experience carefully from a contract formation perspective, care should be exercised with the substantive terms of these contracts as well.
On balance, however, in this decision we have further support for the legal enforceability of well designed electronic contracts. In that sense it is useful not only respect of e-kiosk waivers, but for a range of other e-contracts concluded other than through the medium of paper.
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6th Annual Technology Law Innovation Summit Relevant Blog Posts
- Website operator jailed for distributing copyright infringing copies of musical works: R v Evans, Barry Sookman, March 2017
- TPMs Are Alive and Well: Canada’s Federal Court Awards Nintendo $12.7-million in Damages, Barry Sookman and Daniel Glover, March 2017
- Thinking of Buying or Selling a Fintech Target? Due Diligence Issues Unique to Fintech M&A, Ana Badour, Genevieve Pinto, Jake Irwin and Heidi Gordon, July 2016
- Cybersecurity and M&A – Part Three: Cyber Insurance, Roland Hung, Matthew Harris and Beverly Ma, January 2016
- Canadian Securities Administrators Fintech Initiatives: Regulatory Sandbox and Co-Operation, Ana Badour and Laure Fouin, February 2017
- Partnerships between Banks and Fintech Companies: A Continuing Trend for 2017, Ana Badour, D.J. Lynde and Jessica Firestone, February 2017
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- Blockchain applications may be caught by Ontario’s securities law, Shane C. D'Souza and Rene Sorell, March 2017
- The OSC LaunchPad – Unveiled, Ana Badour, Dan Doliner, Shauvik Shah and Rene Sorell, October 2016
- Overview of IOSCO Research Report on Financial Technologies (Fintech), Shane C. D'Souza, Heidi Gordon and Rene Sorell, February 2017
- Blockchain And Privacy: Transparency And Innovation Pose Challenges for Data Protection, Anaïs Galpin and Charles Morgan, December 2016
- Chatbots, Open Data and Sandboxes: Trending Topics from the 2016 Money20/20 Conference, Kirsten Thompson, Ana Badour, Matthew Flynn and Claire Gowdy, November 2016
- Canada’s Competition Commissioner Emphasizes Innovation, Highlights Fintech Market Study, Dan Doliner, Ana Badour, Kirsten Thompson and Donald Houston, October 2016
- NY State Introduces Cybersecurity Regulations for Financial Services: Implications for Canadian Business, Dan Doliner and Fraser Dickson, October 2016
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- FinTech in Canada: A Report Studying The Canadian FinTech Ecosystem, Genevieve Pinto and Dan Doliner, September 2016
- US Federal Regulators Propose Binding Rules to Enhance Banks’ Cybersecurity Practices, Taha Qureshi, November 2016
- CSA Issues New Guidance on Cybersecurity, Sonia Struthers and Charles Morgan, October 2016
- Cybersecurity Best Practices for Connected Cars Released, Kirsten Thompson and Arie van Wijngaarden, August 2016
- Supreme Court Renders Landmark Privacy decision in Royal Bank of Canada v. Trang, Daniel G.C. Glover, Kirsten Thompson, Barry Sookman, Renee Reichelt and Charles Morgan, November 2016
- EU-US Privacy Shield Adopted: Now What?, Keith Rose, July 2016
- In New CASL Case, CRTC Sends $15,000 Message, Jade Buchanan, March 2017
- Seven Practical Lessons from CRTC’s First CASL Enforcement Decision, Keith Rose, Daniel G.C. Glover, Charles Morgan and Kirsten Thompson, October 2016
- Proving Consent under CASL: CRTC Issues Enforcement Advisory Notice, Amanda Iarusso, August 2016
** For further information and to obtain a copy of our CASL compliance toolkit and Cybersecurity Guide please contact Keith Rose at [email protected]
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