CASL confusion: what July 1 really signifies for marketers

David Elder - 

July 1, 2017 is not only Canada’s 150th birthday -- it is also marks three years since Canada’s Anti-Spam Legislation (CASL) has been in force.  While Canadian businesses are unlikely to celebrate the latter anniversary with barbecues and fireworks, July 1 will signify an important change in the way that CASL will apply. 

Unfortunately, there seems to be some confusion about what the approaching deadline really means for marketers.  From a CASL perspective, July 1 is important for 3 reasons:

Private right of action

Let’s start with what it doesn’t mean: July 1 will no longer mark the coming into force of the private right of action contained in the law.  This provision would have allowed civil suits to be filed against individuals and organizations for alleged violations of the law.  In addition to suing for actual damages, the provision also would have allowed plaintiffs to claim statutory damages (which need not be proved) of up to $200 – including for receipt of a non-compliant email message.

Continue Reading...

Nothing to glOSS over: California court agrees to hear case on open source license enforcement

Michael Decicco and Sara Shayan

Using, developing, and distributing open source software (OSS) can help stimulate innovation, harness collective expertise, and promote interoperable programs and standards. OSS can also be problematic if incorporated into commercial software, as demonstrated by a recent case before the California Northern District Court (Court). Artifex Software v. Hancom involves the alleged breach by Hancom Inc. (Hancom) of a widely-adopted OSS license, the GNU General Public License (GPL). A recent ruling on Hancom’s motion to dismiss the suit adds to the limited jurisprudence on OSS license enforcement.


Artifex Software Inc. (Artifex) is a California company with roots in the open source software community. It offers a popular PDF viewer called Ghostscript, which is made available under two distinct licensing schemes. Users may either license the Ghostscript software commercially, for a fee, or use the Ghostscript software at no cost but subject to the terms of the GPL.

Continue Reading...

Financial technology and the insurance industry: what's ahead

Stuart Carruthers and Andrew Cunningham - 

Late last month, the International Association of Insurance Supervisors (IAIS) released FinTech Developments in the Insurance Industry ("the Report"), an interesting, thoughtful and important analysis of how the growth of FinTech (financial technology) - which has thus far focused mainly on banking and capital markets - is likely to affect the insurance industry. Referring to insurance-focused FinTech as "InsurTech", the 45-page Report considered:

  • innovation drivers in the insurance sector;
  • current InsurTech innovations;
  • the existing InsurTech sector (start-ups, financing, relationships with traditional insurers, etc.);future scenarios and their likely impact on insurance industry supervision; and
  • the effects of Distributed Ledger Technology (DLT) such as blockchain and Big Data.

The Report should be required reading for insurers, FinTech businesses and regulators racing to prepare for the challenges and exploit the opportunities of the InsurTech era. In an article published recently in our Insurance Law Update, we summarize some of the analysis and key findings of the IAIS Report. Click here to read the full article.

Outsourcing: Canada Overview

Michael Decicco and Wesley Ng co-authored “Outsourcing: Canada Overview” for Practical Law Review, published by Thomson Reuters. The practice note provides a high level overview of outsourcing in Canada, including topics such as legal and regulatory requirements, processes and formalities required for transferring assets and employees, and data and privacy protection, among other considerations with respect to different types of outsourcing. To access a copy of the practice note, click here.

Federal Court opines on precedential value of prior PM(NOC) proceedings and scope of experimental use exception to public disclosure

Ryan Sheahan and Jessica Rutledge - 

The Federal Court’s decision in the consolidated proceedings of Bayer Inc. v Cobalt Pharmaceuticals Company  offers useful guidance as to the precedential value of proceedings under the Patented Medicines (Notice of Compliance) Regulations (PM(NOC)) in the context of subsequent infringement actions involving the same patent.  It also provides helpful direction in respect of the scope of the Canadian experimental use exception to anticipatory public disclosure.  

Background:  Patent at Issue

Both the PM(NOC) proceedings and the Federal Court infringement action concerned Bayer’s Canadian Patent No. 2,383,426 (the ‘426 Patent).  The ‘426 Patent relates to a pharmaceutical combination of ethinylestradiol and drospirenone for their use as a contraceptive.  Ethinylestradiol functions as an estrogen, and drospirenone as a progestogen, and both were known to inhibit ovulation when used in combination.  The ‘426 Patent contemplated a novel formulation using rapidly-dissolving drospirenone particles, which delivered unexpectedly consistent bioavailability.  This was unexpected because drospirenone was known to be inactive at an acidic pH of 1 when tested in a laboratory setting, and the normal pH range of the stomach is 1.0 to 3.0.  However, traditional coatings that would protect the drospirenone from the stomach environment released the drospirenone at variable rates, resulting in irregular effectiveness in different people.  Bayer tested a rapidly-dissolving particulate version of drospirenone in clinical trials with women, and discovered it was effective as a contraceptive in the ethinylestradiol combination, and did not degrade or require any coating.  Bayer patented this formulation of the contraceptive in the ‘426 Patent, with an effective Canadian filing date of August 31, 2000, and currently markets two products known as “Yaz” and “Yasmin”, which incorporate the patented invention, with different doses of ethinylestradiol .

Continue Reading...

Is the sign outside your Quebec business an English-only trademark? Time to add some French

Gayle Noble, Catherine Jenner and Tania Djerrahian - 

Previously-announced amendments to the regulations  under the  Charter of the French Language (the Charter) regarding exterior signs and posters have been adopted (Amended Regulations)  and are coming into force on November 24, 2016 (in the same form as discussed in our previous article). The Amended Regulations are intended to ensure the presence of French on or near exterior commercial signs and posters that display trademarks exclusively in a language other than French. The Office québécois de la langue française (the OQLF), the body that administers the Charter, has provided guidance on the implementation of the requirements of the new regulations through two new publications: Affichage des marques de commerce and Le français, langue du travail, du commerce et des affaires au Québec.

The Amended Regulations permit businesses to maintain the integrity of their non-French-only trademarks while requiring a "sufficient presence of French" on the sign/poster or nearby.  The main requirements of the Amended Regulations, as discussed in more detail our previous article, are as follows:

Continue Reading...

CRTC slashes anti-spam fine in first review decision

David Elder -

In the first case considered by the appointed members of the CRTC under Canada’s Anti-Spam Law (CASL), the Commission has significantly reduced the size of the penalty previously issued by staff, potentially raising questions about the appropriateness of previous AMPs issued under the law.

A Notice of Violation was originally issued by CRTC staff to Blackstone Learning Corporation in January of 2015, requiring that company to pay an Administrative Monetary Penalty (AMP) of $640,000.  However, following a review by the CRTC, the amount payable has been reduced to $50,000.

Continue Reading...
Tags: ,

CRTC gets frosted at Kellogg's over email violations

David Elder

In the fifth, and most recent, enforcement decision relating to compliance with Canada’s Anti-Spam Legislation, the CRTC has announced that Kellogg Canada has voluntarily entered into an undertaking respecting alleged non-compliance, which includes payment of $60,000 in penalties.

The undertaking resulted from an alleged failure to obtain consent from recipients prior to sending commercial electronic messages.  The alleged violations apparently occurred over an 11-week period in late 2014.

Continue Reading...
Tags: ,

Privacy Shield formally adopted by the European Commission

Michael Decicco and Rona Ghanbari

On July 12, 2016, the European Commission (Commission) formally adopted the EU-US Privacy Shield (Privacy Shield) by issuing its adequacy decision, providing a new structure for cross-border data transfers from the European Union (EU) to the United States.


The Privacy Shield was developed after the Commission’s previous adequacy decision regarding the Safe Harbour framework was declared invalid by the Court of Justice of the EU. Following extensive negotiations, which considered concerns and recommended changes from the Article 29 Working Party, the Commission and the United States reached an agreement on the terms of the Privacy Shield.

Continue Reading...

CRTC partners with global agencies to enforce spam and telemarketing rules

David Elder - 

The Canadian Radio-television and Telecommunications Commission (CRTC) has announced that it has signed a memorandum of understanding with 10 domestic and global enforcement agencies to aid in the enforcement of spam and telemarketing laws.  However, while the announcement is certainly a step in the right direction, many of the countries that produce the most spam were not at the table.

The agreement is intended to promote cooperation between the various enforcement agencies, and includes commitments by each signatory to share information and intelligence regarding unsolicited communications, where permitted by the laws of its jurisdiction.  

Continue Reading...

Changes in distribution models may affect trademark rights

Justine Whitehead and Hilary Furness - 

In Canada, and most countries around the world, trademarks which are not being used in association with the goods and services with which the marks were registered are vulnerable to expungement for non-use.  In Canada, challenges can be brought under section 45 of Trade-marks Act, which provides for summary expungement of a trademark if, upon request of the Registrar of Trade-marks, a trademark owner is unable to provide evidence of use of the trademark in Canada during the previous three years, in the normal course of trade and in association with the goods and/or services set out in the registration.  This expungement can only be avoided if the owner proves special circumstances that justify temporary non-use of the trademark.

Technological changes are revolutionizing the methods by which certain goods and services are sold to consumers. At one time, products such as books, music recordings and computer games could only be sold to consumers as tangible items.  Now, of course, these items are routinely made available through various electronic means, and in some cases, the business model has moved from distribution of goods to the offering of on-line services.  But what happens to trademark registrations when evolving technology has changed the manner or medium by which the identified goods and services are offered for sale to consumers?  

Continue Reading...

Signs with registered English only trademarks in Québec? Not a problem if you have sufficient and visible French somewhere close by

Gayle Noble, Catherine Jenner and Tania Djerrahian -

On Wednesday May 4, 2016, the Québec Minister of Culture and Communications and Minister Responsible for the Protection and Promotion of the French Language, Hélène David, introduced draft amendments (the Proposed Amendments) to certain regulations under the Charter of the French Language (the Charter) to ensure the presence of French where commercial signs and posters display trademarks exclusively in a language other than French. This article provides some background relating to the Proposed Amendments as well as a summary of some of the key provisions.

Continue Reading...

You can Google it: Supreme Court of Canada grants leave to appeal global injunction

Alex Sarabura - 

The Supreme Court of Canada has granted leave to hear an important case respecting the ability of Canadian courts to enjoin the behaviour of organizations with respect to their operations outside of Canada.

On February 18, 2016, the Supreme Court of Canada granted Google Inc. leave to appeal the judgment of the British Columbia Court of Appeal in Equustek Solutions Inc. v. Google Inc., in which the BCCA upheld an interlocutory injunction prohibiting Google from including specific websites in its search results worldwide.

Continue Reading...

Cyber-attacks: why any business may be at risk and five possible ways to address the risks

Vanessa Coiteux - 

In this article, Stikeman Elliott’s Vanessa Coiteux reminds us that the risk of cyber-attack is by no means confined to businesses in certain industries. She identifies five cybersecurity risk factors that apply to most or all businesses and discusses how to address them. These observations will be of particular interest to corporate directors who, as the article notes, increasingly have to take the risk of cyber-attacks into account – including in situations where the acquisition or sale of a business is being contemplated.

  • “This is not a big public company!”
  • “This is not a financial institution or a retail company!”
  • “There must be more valuable information to hack out there!”
  • “Putting cybersecurity measures in place is costly!” 
Continue Reading...

New EU-US Safe Harbour Agreement

Michael Decicco and Eryn Fanjoy

On February 2, 2016, the European Commission announced that it reached a deal to replace the EU-US Safe Harbour framework that was declared invalid last year by the Court of Justice of the European Union (CJEU).  Referred to as the “EU-US Privacy Shield”, the new framework should provide businesses with guidance for the safe transfer of personal information of citizens of the European Union (EU) to the United States. 


The CJEU declared the old Safe Harbour framework invalid on October 6, 2015.  Under the EU Data Protection Directive, the personal information of EU citizens can only be transferred from the EU to countries with adequate data protection standards. The old Safe Harbour agreement, negotiated between the European Commission and the United States Department of Commerce, was one of a number of mechanisms available to EU businesses to ensure there was an adequate level of protection when transferring personal data of EU citizens to the United States. One of the CJEU’s primary concerns with the old framework was the massive and indiscriminate surveillance of personal information of EU citizens in the United States, which was viewed as incompatible with the “fundamental rights” of EU citizens. 

Continue Reading...