BarTalk December 2017 | Intellectual Property Law by The Canadian Bar Association, BC Branch

ENTERTAINMENT LAW | MUSIC CONTRACTS | COPYRIGHT TROLLS | PATENT LAW

DECEMBER 2017 | bartalkonline.org

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Win a prize if you can guess all three BC ski resorts

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news BARTALK EDITOR

Deborah Carfrae EDITORIAL BOARD CHAIR

Kirsten McGhee

COVER CONTEST

Win a Prize If You Can Guess All Three BC Ski Resorts

EDITORIAL BOARD MEMBERS

Tina Dion, QC Brandon Hastings Eryn Jackson Kuldip Johal Kevin Kitson Lisa Picotte-Li Donna Turko Sean Vanderfluit

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BARTALK SENIOR EDITOR

Carolyn Lefebvre

STAFF CONTRIBUTORS

Gina Blaeser Travis Dudfield Kent Hurl Christopher LaPrairie Michelle May Sanjit Purewal Stuart Rennie Jennifer Weber Judy Yen The BC Branch of the Canadian Bar Association, 10th Floor, 845 Cambie St. Vancouver, BC V6B 5T3 Tel: 604-687-3404 Toll-free (in BC): 1-888-687-3404 bartalk@cbabc.org

BarTalk is published six times per year by the British Columbia Branch of the Canadian Bar Association and is available online at bartalkonline.org. © Copyright the British Columbia Branch of the Canadian Bar Association 2017. This publication is intended for information purposes only and the information herein should not be applied to specific fact circumstances without the advice of counsel. The British Columbia Branch of the Canadian Bar Association represents nearly 7,000 BC members and is dedicated to improving and promoting access to justice, reviewing legislation, initiating law reform measures and advancing and improving the administration of justice.

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Be one of the first three people to correctly guess the name of all three BC ski resorts and win a prize package from one of the three BC ski resorts. Email your answers to bartalk@cbabc.org by December 29, 2017 for your chance to win! We will reveal the BC ski resort names and the names of the contest winners in the February 2018 issue of BarTalk.

KUDOS

2017 Georges A. Goyer, QC Memorial Award for Distinguished Service Congratulations to John Waddell, QC, recipient of the 2017 Georges A. Goyer, QC Memorial Award for Distinguished Service. Mr. Waddell is with Waddell Raponi LLC in Victoria, BC. The award is named for Georges A. Goyer, QC, a respected member of the CBABC Branch (L-R): John Waddell, QC who passed away in 1992 after a courageous with Bill Veenstra, battle with cancer. This annual award recognizes CBABC President exceptional contribution or achievement by a BC resident to the law, the legal profession or a law-related benefit to the people of British Columbia.

Read John Waddell’s acceptance speech uuu

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DECEMBER 2017

VOLUME 29 / NUMBER 6

Contents

Departments

FROM THE PRESIDENT Moving the Agenda for Justice Forward by Bill Veenstra

EXECUTIVE DIRECTOR The Antithesis of Intellectual Property by Caroline Nevin

PRACTICE TALK Guarding Your Confidences by David J. Bilinsky

DAVE’S TECH TIPS

NOTHING OFFICIAL Tales from a Topographic Yacht Rocker by Tony Wilson, QC

12 INDIGENOUS MATTERS Elevating our Cultural Awareness by Tion Dion, QC

Sections

10 SECTION UPDATE Intellectual Property & Technology Law

Features

14 THE LEGAL IMPLICATIONS OF THE “IRONMAN” TATTOO by Stephanie Melnychuk 15 PRACTISING ENTERTAINMENT LAW by Jeff Young 18 MUSIC CONTRACTS IN THE DIGITAL AGE by Tarek Elneweihi 19 THE UNCERTAINTY OF TOMORROW by Michael E. Reid 20 DEMAND LETTERS FROM COPYRIGHT TROLLS by Tamsin Miley 21 PATENT LAW TRADE NEGOTIATIONS by Stephen Ferance 22 IS WINTER COMING FOR PIRACY WEBSITES IN CANADA? by Travis Dudfield

Guests 9

THE GLASS CEILING FOR BC LAWYERS by Kathryn McCready and Nora Bergh

Inside This Issue Look inside this month’s Intellectual Property Law issue of BarTalk for a diverse range of articles – from trademark and copyright issues arising in the context of tattoos – to a description of the fulsome set of skills required for the competent entertainment lawyer’s toolbox. Challenges posed by intellectual property rights across a variety of sectors is a recurring theme, coupled with practical tips for meeting those challenges, and opportunities for innovation. Also inside you will find the inaugural instalment of Indigenous Matters, written this month by Tina L. Dion, QC, Chair of the Aboriginal Lawyers’ Forum and the Truth and Reconciliation Working Group.

News and Events 2 Cover Contest: Win a Prize If You Can Guess All Three BC Ski Resorts 2017 Georges A. Goyer, QC Memorial Award for Distinguished Service 13 Cross-Cultural Bias by Frances Rosner 23 2017 Mentorship Receptions at UBC, TRU and UVic 24 CBABC WLF News Notice to the Profession Thank You to All CBA West Sponsors 25 BC Legislative Update Branch & Bar Calendar What is Cyber Warfare, Exactly? What’s Up With the Bread Price-Fixing Investigation? 26 Tips from Courthouse Libraries BC BC’s Legal History by Hamar Foster, QC 27 Paradise Papers: Tackling Creative Compliance 16 27 28 31 32

Also In This Issue

MEMBER SAVINGS LAW FOUNDATION OF BRITISH COLUMBIA PROFESSIONAL DEVELOPMENT DISPLAY ADS BAR MOVES

33 NEW MEMBERS

Click here for LEGAL OPPORTUNITIES and ads DECEMBER 2017 / BARTALK

FROM THE PRESIDENT BILL VEENSTRA

Moving the Agenda for Justice Forward And the battle for legal aid rages on

uch effort was devoted this year to developing and promoting the CBABC’s Agenda for Justice before the May 2017 provincial election. The NDP made several campaign commitments in the justice area – most importantly to strengthen access to justice and community safety with additional funding for legal aid and more sheriffs in the amount of at least $15 million in the 2018 budget year and $20 million in the 2019 budget year. In recent months, the case for legal aid has repeatedly been made by several justice sector organizations. In addition to our Agenda for Justice, the national CBA adopted benchmarks for legal aid. Also at the national level, the Canadian Forum on Civil Justice has issued a series of reports examining the costs of not providing adequate access to justice. Within British Columbia, our Law Society has adopted “A Vision for Publicly Funded Legal Aid,” and has been actively advocating for that vision, while a coalition of other legal organizations has done its own advocacy with respect to legal aid. All of these organizations understand that we must continue pressing government to ensure a properly funded legal aid system. Much of our advocacy focus this year has been on working with the new Attorney General, David Eby, to remind him of the importance of proper legal aid funding, and ensure that the commitments made during the campaign find their way into the budget to be delivered in February 2018. We have made clear to him that the profession wants to be part of the solution to the challenges in legal aid and to access to justice generally. The CBABC has had two major focuses in its legal aid advocacy. The first is securing proper funding for legal aid in family law matters. Since funding cuts announced in 2002, the Legal Services Society has had no funding to provide family law legal services for the majority of family

BARTALK / DECEMBER 2017

law matters – services are only provided where there are actual or threatened safety or violence issues, or to resolve a serious denial of access to children, and then only to resolve that immediate problem. A great many people cannot afford to access legal services to help them navigate the system, resulting in roughly 40% of Provincial Court hearings in family matters having at least one party not represented by counsel. This has significant impacts on those going through family breakdowns as well as in the court system itself. In many cases, parties struggle to present their positions, or to resolve their cases expeditiously. Those unable to move their situations through to a successful conclusion often end up requiring assistance from other government programs. The extra time and attention required of judges and court staff puts extra strain on, and requires more, judicial and court resources. A properly funded family law legal aid system is essential.

A second area of focus is the legal aid tariff. The current rates paid to lawyers performing legal aid work have been increased just once since 1991, do not provide reasonable compensation for the services provided, and in most cases do not even cover the cost of a lawyer’s overhead. Rates paid to lawyers acting for BC’s Ministry of Children and Families are nearly 50% higher ($135/ hour vs. $84 to $92) – as are the rates paid to lawyers doing legal aid work in Ontario. Increasing the tariff amounts has its challenges in the political world. However, at some point the system becomes unsustainable as lawyers face increasing costs for overhead as well as the effects of inflation generally. The number of lawyers in BC who are prepared to take on legal aid cases has dwindled as more realize they simply cannot afford to act. Minister Eby has indicated a willingness to tackle both of these issues. The CBABC will continue to work with him as budget day approaches. The legal profession needs to continue pressing our MLAs to make legal aid a priority, especially in family law, and be ready to support any move to increase tariffs. I am happy to hear from you with respect to any of these issues.

Bill Veenstra

president@cbabc.org

EXECUTIVE DIRECTOR CAROLINE NEVIN

The Antithesis of Intellectual Property The CBA as a model of information sharing

he theme of this issue of BarTalk is Intellectual Property. The underlying premise of intellectual property is that a monopoly of ownership can be assigned to a creation of the intellect. There are valid reasons for this concept being protected. However, in the case of the CBA, we are very committed to the view that there should never be a monopoly on ideas about how to make our organization better. When I first joined the CBA 20 years ago, I quickly noticed that information was very sparsely shared. With 10 provincial branches, two territorial branches (later three, as Nunavut joined) and the in-house counsel Canadian Corporate Counsel Association (“CCCA”), there were bits and pieces of information being gathered and paid for through multiple offices. Very little of it was available to others. Somehow, the

concept had evolved that those who collected the information, or paid for the collection of it, should carefully control who had access or used it. Fast forward to 2017. We now widely and rampantly share information across the entire organization. We have an intranet site where all staff have access to information that helps everyone do their jobs better, regardless of the size of their office. We have crossoffice functional staff teams working on improvement projects with pieces of information and expertise provided from all the participating sites. We have bi-weekly two-hour calls of all Executive Directors and the National Senior Management Team, to not just share information but make collective decisions about how best to use it. And, we now have a concrete membership feedback system in place developed by one of Canada’s best researchers in this field, Nik Nanos.

Every quarter, Nanos will survey half of our membership. The topics will vary, depending on where we are in our planning cycle for developing new products and services or re-evaluating current ones. We have had two “waves” of these surveys already, and both have already fed into significant changes. The objective of the surveys is to ask key questions about what we’re doing for members, whether it is relevant, and what else our members need. Most importantly, those answers are shared across the country, not just with staff but with the Association’s leaders too. Everyone is working from the same information. And, with shared knowledge comes shared responsibility and accountability for acting on it – what a powerful idea! As an example, the most recent survey asked questions about our Sections and PD programs. We learned some interesting things, including:

has one of the highest participation rates in the country when it comes to Sections CBA is the primary source of annual CPD, second is law firms and third is other practicerelated associations In-person PD is the preferred option by far, then live webinars There is a need for more effective communication about Sections and upcoming activities There is a need for more practice-specific PD These are just some of the key learnings that we are sharing all across the organization, so we can bring our powerful collective energy and ideas to the important work of improving and adding value to our Sections and PD programs. With free enrollment in 75 BC Branch Sections and 41 National Sections – including the in-house counsel gem, CCCA – plus access to hundreds of hours of PD programs here in BC and online across the entire CBA, we are strongly focused on acting on your feedback and making your membership even more worthwhile!

Caroline Nevin

cnevin@cbabc.org DECEMBER 2017 / BARTALK

practicetalk DAVID J. BILINSKY

Guarding Your Confidences Take proactive steps now...

Listen Do you want to know a secret Do you promise not to tell, whoa oh, oh... r r

“

– Music and Lyrics by Lennon-McCartney, recorded by The Beatles

We don’t have to worry about being hacked. We are one of the biggest law firms and have a whole department concerned with IT Security.” However, Bloomberg Law reported that Mandiant, a cybersecurity firm has stated that 80 of the 100 biggest US law firms have been hacked since 2011. “We don’t have to worry about being hacked. Hackers only go after the big fish, not us.” But, The New York Times reported that 60% of all online attacks in 2014

targeted small and midsize businesses, according to Timothy Francis, enterprise leader of cyberinsurance at Travelers. The fact is that while large law firms can throw considerable resources at cybersecurity, hackers are also throwing large resources back at them seeking valuable confidential information for resale on the black market. After all, information is money. Smaller law firms are also targeted on the basis that they are easier to attack and criminals can demand quick cash by holding a law firm’s data hostage. Such ransomware attacks are high in volume and don’t require any middlemen. In Law Firm Data Hack, Part 1 in lawpracticetoday.org, Sharon Nelson and John Simek stated that: “Nearly 50 law firms were targeted by a Russian cybercriminal who posted on a cybercriminal forum seeking a hacker to collaborate with him. He hoped to hire a black-hat hacker to handle the technical part of 6

BARTALK / DECEMBER 2017

breaking into the law firms, offering to pay $100,000, plus another 45,000 rubles (about $564). He offered to split the proceeds of any insider trading 50-50 after the first $1 million.” Cynet.com reported that a Providence law firm was held hostage for a $25,000 ransom. However, the decryption key initially failed to work and the firm had to pay more. It lost $700,000 in billings alone. Large or small, a law firm’s secrets, reputations and finances are placed at risk in a hack. As a result, managing partners of all sizes of law firms have yet another thing to worry about. There are two major components to law firm security. One concern is the vulnerability of the system’s hardware and software. The other concern is the vulnerability of the “carbonware” – or in other words, the humans using the system.

According to LexisNexis, there are six key security steps for law firms to take. The first is to put all your IT security policies in writing and hold training sessions around them to maximize security awareness for all employees. The second is to inventory all your data and detail who has what permissions or control over the various parts of the system. The third is to only grant access on a “need to know” basis. That way, even if someone’s credentials are hacked, the hackers don’t get access to your entire system. Fourthly, keep all your systems updated and patched. I am amazed at the number of lawyers who are still using outdated browsers, operating systems and anti-virus suites. Fifthly, ensure that you have adequate insurance that will cover you depending on your loss (see Insurance Issues: Risk Management, 2017: No. 2 Summer – a Guide to Insurance for Private Practitioners Continued on page 7 >>> The views expressed herein are strictly those of David Bilinsky and do not reflect the opinions of the Law Society of British Columbia, CBABC, or their respective members.

David J. Bilinsky is the Practice

Management Advisor for the Law Society of British Columbia. Email: daveb@thoughtfullaw.com Blog: thoughtfullaw.com

GO ONLINE FOR MORE INFORMATION

dave’s techtips What steps can you take to protect yourself and reduce the possibility that you will be hacked? Here is a selection of the top tips: Use

strong passwords and a password manager. HowtoGeek.com has a great article on creating a strong password and recommended password managers. Most password managers will generate strong passwords for you. GRC.com and other sites will generate a new, unique strong password for you every time you visit (that you can then copy and paste into a password manager, such as Keychain for the Mac). PCMag.com reviews the best password managers for 2017. Don’t use the same password everywhere and don’t keep passwords in a document on your PC! Use two-factor authentication. This inserts an extra step before you can sign into websites to access email,

Facebook and others. The site sends a code to your phone by text that you have to enter after entering your name and password. Without this code, the website won’t let you in. Even if hackers gain your password, without access to your phone they are locked out. Techrepublic.com has a useful article on two-factor authentication and how to use it, written for non-techies, along with links on how to set up two-factor authentication on many services. Be careful with emails! Email phishing scams come in many forms. Tripwire.com has a great article: Phishing Frenzy: The Good, The Bad and How You Can Protect Yourself.

Protect

your mobile devices. Cellphones are tantalizing devices for hackers seeking ways to break into business networks. Smallbiztrends.com has The 10 Best Ways to

Protect Your Mobile Device Against Hackers. Rogers.com reports that nearly 1 in 4 people will experience loss, theft or damage to their wireless device this year. Take steps to protect your business from ransomware. Cbia.com published Fourteen Tips to Protect your Business from Ransomware attacks. I would add one more tip: Back your data up in a secure, encrypted online storage service such as sync.com. Cloudwards.net lists and ranks the best cloud storage in Canada. Sync.com is the overall winner as it is a zeroknowledge storage service (meaning that they have end-to-end encryption and you and only you have access to the decryption keys). When it comes to IT, one can think that you have adequate protection, that is, until you get hacked. I looked for Canadian data, but in the US it is reported that hackers cost businesses more than $445 billion in 2014. Spending money on security and prevention is always money well spent. © 2017 David J. Bilinsky

Continued from page 6

by the Law Society of BC). Lastly but not least, have a “breach ready” response plan so you have pre-planned how to respond if you experience a cyber breach. The boy

scouts’ advice on “Being Prepared” applies here! By taking steps now, you can diminish the possibility that your reputation and financial well-being

will be damaged by a hack. After all, you don’t want someone asking if someone wants to know one of your secrets....

DECEMBER 2017 / BARTALK

nothingofficial TONY WILSON, QC

Tales from a Topographic Yacht Rocker It’s the 70s calling – they want their music back

n the same week the Beatle Industry released yet another remix of Sgt. Pepper’s in time for its 50th Anniversary, I went to see the Battle of the Bar Bands at the Commodore, which is a fabulous event for Vancouver lawyers that I have yet to be invited to play drums at. Perhaps no one knows I played on a very obscure (but collectible) 1972 indie-album called “George McDowell and the Lads’ play the Wig ‘n Dickie.” I was the Lads’ backup drummer on Friday and Saturday nights when I was 15. As my father owned the Wig ‘n Dickie in Victoria, I was exposed to the benefits of nepotism at an early age, and became a better drummer for it. I drummed to all of the sing-along English-pub hits of the 1940s because, like Victoria in those days, it was still the 1940s in the 1970s at the Wig ‘n Dickie. “I Belong to Glasgow,” “The White Cliffs of Dover,” and “Campbeltown Loch

I Wish You Were Whisky,” were the mainstay of our nightly repertoire. Wartime British sing-along music wasn’t the music of my youth so much as it was the music of my father’s youth. But it was his club. So, after the Beatles broke up, I yearned for something more “modern.” I stumbled on a Waldorf Salad of Moog synthesizers, long songs and strange lyrics called progressive rock (prog rock); a genre once described as a waste of talent... and electricity. But prog rock is becoming interesting again, not so much because the music was really good, but because, to many, it was really bad. There’s a new book out called “The Show That Never Ends” by David Weigle. I haven’t read it yet, but James Parker’s review in the Atlantic should be required reading for all writers; even legal ones. Parker calls prog rock’s priestly robes, terribly pampered proficiency, pompous lyrics and its air of Englishness the “whitest 8

BARTALK / DECEMBER 2017

music ever.” He describes the theatrical approach of ELP’s Keith Emerson to his keyboard as “vandalistic” (a word I now use). It’s a musical genre that in Parker’s opinion, is “hated, dated and sonically superannuated.” Yes’ Tales from Topographic Oceans, he says, “is an experience so unintelligible and close to unbearable, it’s like being read aloud a lengthy passage of prose with no verbs in it.” But, in fairness to Yes, Topographic Oceans is low hanging fruit. That album marks the moment when prog rock jumped one shark only to be eaten by another: punk rock. But truth be told, I’d still rather listen to “Lucky Man,” “I’ve Seen All Good People” and albums by Genesis and Pink Floyd than anything by the Sex Pistols or Devo. Life goes on. In the 80s, I migrated to jazz; particularly Pat Metheny and Michael Franks.

In the 90s, I happily listened to Baby Beluga and other children’s songs, because of course, I was raising small kids. Other than the Spice Girls (which my daughter liked), Sting and Peter Gabriel (which I liked), I have no clear recollection what 90s music was. Or for that matter, the 00s. As for this decade, I’m still a jazz addict and stream “Dinner Jazz Excursions” on the web (no commercials!). It’s where I discovered jazz pianists like Jessica Williams. Ici Musique fills the gap left by Radio 2 when the CBC gave the middle finger to its loyal audience of early morning and late afternoon classical music and jazz listeners (and it’s where I discovered Caravan Palace). But I confess in July and August (and only then), I listen to “yacht rock”; ironically, from my boat. Yacht rock is a big tent of nostalgia that is despised almost as much as prog rock and includes Christopher Cross and Steely Dan. It goes well with very late middle age, wine and... yachts. Despite all that, the 70s still call. I think I want to learn how to play the theremin. Unfortunately, I don’t think it’s going to get me into a lawyer’s bar band. Tony Wilson, QC is a franchise lawyer at Boughton in Vancouver and a Bencher of the Law Society. The views expressed herein are strictly those of Tony and do not reflect the opinions of the Law Society, CBABC, or their respective members.

guests KATHRYN MCCREADY AND NORA BERGH

The Glass Ceiling for BC Lawyers 40 more years of inequality?

2016, where the ratio recorded was 76% male and 24% women partners. This suggests a rate of change of less than 1% per year. Law360 concluded in their Glass Ceiling Report that progress in retaining and advancing women in the practice of law was incremental at best. Here in BC, the ratio of women partners is almost identical to that of Ontario. And with a similar rate of change, it will take 40 years to break the glass ceiling and reach gender

The Mapping Her Path head n July 2017, Law 360 pubcount found that in BC, women lished their Glass Ceiling Remade up 36.6% of all lawyers port that surveyed 300 law and 24.5% of partners. Since firms in the US. The report women have accounted for about concluded that progress to increase the number of women in law firms has been “incremental at best, especially at the partnership level.” Women made up 34.8% of all attorneys, and less than 20% of equity partners at the law firms surveyed. Law Graduates Practising Lawyers Partners How does BC compare when it 50% of all law graduates over comes to retaining and promoting parity among partners at BC the past decade, more than onewomen lawyers? law firms. third of practising lawyers should The Justice Education Society Mapping Her Path conducted a be women. (“JES”) has funding from the needs assessment that collected the The Law Society of BC publishStatus of Women Canada to examviews of 400 BC women lawyers. es information about the gender ine and promote the retention and To learn more about their challenmake-up of medium to large firms advancement of women lawyers in ges, and how this project is workin BC, noting that 36.7% of pracBC. As part of the Mapping Her ing to make a difference, visit Justising lawyers at these firms are Path project, the Society conducted ticeEducation.ca/programs/Mapfemale. The Law Society does not a similar count of women in BC ping-Her-Path or contact Kathryn. currently record the gender ratio practice. JES examined the websites McCready@JusticeEducation.ca. of partners. of law firms with 10 or more lawIn Ontario, the Law Society of yers and conducted a gender-based Upper Canada has been tracking count of the lawyers and partners. Mapping Her Path is a Justice Educathe gender ratio of partners for Of course, the staff pages of tion Society project that promotes the the last eight years. In 2009, the websites are not always up to retention and advancement of women first year of their count, the gender date, but this count provides a lawyers in BC. Kathryn McCready is the ratio of partners at Ontario firms snapshot of how BC compares Project Coordinator and Nora Bergh is was 81% male and 19% female. the Legal Content and Services Manwith the findings of the US Glass The most recent count was in Ceiling Report. ager at Justice Education Society. DECEMBER 2017 / BARTALK

sections SECTION UPDATE

Keep Current A review of provincial Section meetings Intellectual Property & Technology Law Meetings in Review 2017

Intellectual Property & Technology Law Save-the-Dates 2018

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The CBABC Intellectual Property & Technology Law Section deals with legal issues affecting intellectual property and the technology industry, examining ownership, licensing and intellectual property transfer and protection rights while providing a great opportunity for professionals to meet and discuss updates in this practice area. The Section hosts luncheons to acquaint its members with new developments in IP and technology law in Canada and abroad.

Intellectual Property & Technology Law 2017 In Review ON FEBRUARY 10, the Section

udiscussed the high failure

rates of software development projects and how more often than not, these projects experience adversities such as delays, ballooning costs and defective work product. David Crane, Partner, McCarthy Tétrault LLP (Vancouver), provided an

BARTALK / DECEMBER 2017

overview of key risks and issues with respect to software development agreements and how they can be addressed through innovative approaches and effective contractual mechanisms. It included an examination of the increasingly popular “agile” software development methodology, including its advantages and disadvantages and how an agreement for agile software development requires a specialized contractual approach.

The technologies and skillsets of today’s visual effects houses has brought us a dazzling array of cinematic possibilities: We’ve seen Jeff Bridges return as his 30-yearold self (Tron Legacy), and Brad Pitt age in reverse (The Curious Case of Benjamin Button). More recently, Peter Cushing and the late Carrie Fisher returned from the grave to reprise rolls they originally played 40 years ago (Star Wars: Rogue One). ON MAY 2, Ronan Reinart, Bell Alliance, discussed these exciting technological advances and how they present a number of legal and ethical issues, and how the nature of digital image-making technologies has surpassed what was envisioned by originators of copyright laws. ON JUNE 26, Christopher Sweeney, Partner, Knobbe Martens, Seattle, presented on biotech patents and strategies for securing and maximizing protection in the US, elaborating on recent developments in the area of patent eligibility subject matter across the border. Christopher elaborated on section 101 of the Patent Act, which defines patent-eligible subject matter to be “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvements thereof.” However, he noted that even if a discovery falls within these categories, courts have held that laws of nature, natural phenomena, and abstract ideas are not patent-eligible. The rationale behind these judicially recognized exceptions is that certain knowledge should be free for everyone to use. Therefore, while discoveries that are considered laws of nature, natural phenomena, or abstract ideas are themselves not patent-eligible, methods and products employing these discoveries to perform a real-world

function are patent-eligible. So, even though recent developments in patent law have made it more difficult to secure patent protection for certain technologies within the life sciences, there are still ways to make such inventions patent-eligible. Christopher guided members through the changing legal landscape in the US to show how patent applications and claims may be drafted to maximize the likelihood of securing commercially valuable patents. He also advised on the importance of method claims for pharmaceutical inventions and the options available for patent stacking and maximizing patent terms (especially in light of FDA delay). ON NOVEMBER 24, the Section hosted Tingxi Huo of Chofn Intellectual Property in Beijing, China, to discuss tips and traps companies should be aware of as they prepare to do business in China. Having been involved in applications for trademark registration, opposition, re-examination, investigation in infringement, litigation and strategic planning for enterprise trademark since 1998, Mr. Huo has delivered IP agency service to worldrenowned enterprises like Nokia, Sony and Casio, and brought this experience to CBABC members.

Intellectual Property & Technology Law Save-the-Dates 2018 The CBABC Intellectual Property & Technology Section kicked off the 20172018 term with its annual social event on November 5, 2017 at the Lions Pub in Vancouver, where members had an opportunity to network

and meet one another in a relaxed social environment. If you missed this opportunity, members will have a second chance to connect during a spring social event to wrap up the term. Details will be announced in the new year. The Section will be hosting Kieran Moore, IP counsel for Lululemon, who oversees Lululemon’s intellectual property protection. Kieran sets Lululemon’s strategic directions, identifies IP with designers, developers and inventors, and co-ordinates patent, trademark and other IP protection and disputes. In March of 2018, Kieran will speak to best practices for working with in-house counsel. Additional luncheon events will be announced in 2018.

Upcoming Section Meetings Looking for upcoming Section meetings? Check the online Sections Calendar or the CBA PD Resource site regularly as new meetings are added daily. Enrolled members automatically receive notice of their Sections’ meetings by email. Enjoy the benefits of membership and enrol in Sections today. Remember to keep your profile updated to ensure you receive notices. For CBABC members, more detailed information and available minutes from the Section meetings are online at cbabc.org under CBABC Sections & Forums.

MEET THE SECTION EXECUTIVE Intellectual Property & Technology Law

The Section is chaired by Stephanie Melnychuk (pictured), an associate and registered patent and trademark agent at Oyen Wiggs Green & Mutala LLP. Stephanie brings extensive experience as Co-Chair, Vice-Chair, and Member-at-Large positions in previous terms. Pablo Tseng, an associate and registered patent agent at McMillan LLP, is Vice-Chair, and has previously served as the Section Secretary, Legislative Liaison, and Registration Officer. Amanda Wheat, an associate and registered trademark agent at Richards Buell Sutton, is the Section Treasurer, volunteering in this position since 2014. Mat Brechtel, an associate and registered trademark agent at Norton Rose Fulbright Canada LLP, is the Legislative Liaison, who joined the ranks of the Section Executive this past term as the Registration Officer. In her inaugural year, Yui Fei, an associate at Richards Buell Sutton, is volunteering as the Section Secretary. Also in her inaugural year, Member-at-Large, Christina Kwok, joins us from Oyen Wiggs Green & Mutala LLP.

DECEMBER 2017 / BARTALK

Indigenousmatters TINA L. DION, QC

Elevating our Cultural Awareness An update on TRWG and ALF

Welcome to the newest addition to BarTalk, Indigenous Matters, where we seek to elevate the cultural awareness of BC’s legal profession as it relates to Indigenous Peoples and the practice of law. In this first article, Tina Dion, QC shares recent developments from the Truth and Reconciliation Working Group (“TRWG”) and the Aboriginal Lawyers Forum (“ALF”).

TRUTH AND RECONCILIATION WORKING GROUP

he Truth and Reconciliation Commission released its Executive Summary Report on June 2, 2015, along with 94 Calls to Action, and on December 15, 2015, it released its Final Report. The Calls to Action are aimed at redressing the legacy of residential schools and advancing the process of reconciliation. At its meeting on November 18, 2016, the CBABC Executive Committee passed a resolution establishing the Truth and Reconciliation Working Group. At the January 28, 2017 meeting of the Provincial Council, the Executive Committee launched the TRWG to respond to the Calls to Action, specifically Calls to Action 27 and 28. An invitation was extended to members of Provincial Council to participate on the TRWG. Currently, there are 20 members of the TRWG, of which, eight are Indigenous members. At its first meeting on February 7, 2017, the chairperson was determined, and draft Terms of Reference were tabled for discussion and approval, as were proposed sub-committees. Sub-committee 12

BARTALK / DECEMBER 2017

mandates, and for which they will make recommendations to the CBABC Executive Committee, are: Professional Development and Section Programming, Development of a CBABC Position statement, Law Firm Resources and Guides, and Indigenous Leadership and Advocacy to implement the Calls to Action. Since February 2017 the TRWG has been meeting almost monthly. Each of the five sub-committees has determined its chair, and together with their members, they continue to advance their mandates. An interim report on the work of the TRWG will be provided at the January 2018 Provincial Council. It is anticipated that some of the sub-committees will have concluded their work, and others will have more to do. ABORIGINAL LAWYERS FORUM

The Aboriginal Lawyers Forum was formally established as a forum of the CBABC in 2010. The ALF is the only forum of the CBA in Canada. The mandate of the ALF, fulfilled through its

three objectives – providing networking opportunities, leadership and mentoring, and opportunities to celebrate Indigenous culture – is to address issues facing Indigenous students and lawyers, including their retention in the legal profession and the support and enhancement of their stature and influence in it. On January 28, 2017, the CBABC amended its bylaws to, inter alia, establish a permanent position on the Executive Committee for the chair of the ALF, or a designate. Participation on the ALF Executive Committee has been increasing and for 2017-2018, the committee is comprised of 11 Indigenous lawyers. On June 16, 2017, the ALF hosted its 6th annual retreat, including our first-ever all Indigenous Judge’s Panel. Later that evening, the ALF hosted its 10th Annual Aboriginal Day Online Auction reception. Monies raised from the auction are directed to support ALF events and to support annual Indigenous student awards. At the annual Committees Appointment Day held on July 6, 2017, the CBABC Executive Committee resolved to create seats for an ALF representative on the Continued on page 13 >>> Tina L. Dion, QC, practises in Tsawwassen, BC. She is the Chair of the ALF and TRWG.

CrossCultural Bias Psychological Testing Not Validated for Indigenous Offenders Common psychological tests that form part of risk assessments have been impugned as being susceptible to crosscultural bias when applied to Indigenous offenders. The Hare Psychopathy Checklist Revised, Violence Risk Appraisal Guide, Sex Offender Risk Appraisal Guide, Static 99 and the Violence Risk Scale – Sex Offender psychological assessments were designed and tested using background information and data from primarily non-Indigenous populations. Despite the lack of empirical evidence proving these tests reliable for Indigenous offenders, assessors and decisionmakers have been utilizing them as tools to predict recidivism and psychopathy in our justice system for decades.

Risk assessments are relied on by judges presiding over criminal matters such as dangerous offender/long-term supervision order applications and they are extensively relied on by the Correctional Service of Canada (“CSC”) in its management of the inmate population. The CSC has known since the 1990s that research needed to be conducted on the reliability of the impugned tests, but it failed to embark on the research citing budgetary constraints as the reason for its inaction. Métis inmate, Jeffrey Ewert asserts that the continued use of these unreliable test scores by the CSC leads to greater restrictions and more time in jail. Arguments were heard at the Supreme Court of Canada on October 12th, 2017 that the CSC contravened its statutory requirement to “take all reasonable steps to ensure that any information about an offender it uses is as accurate, up to date and complete as possible” giving rise to breaches of sections 7 and 15 of the Charter. It was argued that section 7 is engaged because unreliable test scores are used to restrict and deprive an Indigenous inmate’s liberty and security of person.

Section 15 is triggered because test scores are validated for non-Indigenous inmates but not for Indigenous inmates which leads to disparate correctional outcomes. Contextualized arguments were advanced by Mr. Ewert and intervenors about substantive inequality and the heightened need to address these systemic institutional shortcomings given the overincarceration epidemic and the history of colonization, marginalization and residential schools. Judgment was reserved. Corrections

and Conditional Release Act, S.C. 1992, c. 20, ss. 4(g) & 24(1). Jeffrey G. Ewert v. Her Majesty the Queen in Right of Canada (the Commissioner of the Correctional Service of Canada, the Warden of Kent Institution and the Warden of Mission Institution, 2017 CanLII 12225 (SCC) Supreme Court of Canada Webcast, October 12, 2017 Ewert v. Canada (Attorney General), 2015 FC 1093 (CanLII) Canada v. Ewert, 2016 FCA 203 (CanLII)

by FRANCES ROSNER

Continued from page 12

following committees: Government Relations Committee, BarTalk Editorial Board Committee, and the Advisory Committee to the Judicial Council of British Columbia. Also, starting this fall, the ALF now

attends the Law Society’s Benchers meetings as a regular guest. The ALF hosted its 8th annual holiday banquet on De cember 1, 2017. The Executive recognized one Indigenous student from each BC

law school with a $500 Student Appreciation Award. Also, the winner of the Special Contribution Award is the Honourable Steven Point. He is a Provincial Court judge and past Lieutenant Governor of BC. DECEMBER 2017 / BARTALK

feature STEPHANIE MELNYCHUK

The Legal Implications of the “IRONMAN” Tattoo Trademark and copyright issues for athletes

RONMAN is an iconic trademark in the world of triathlon. The term “Ironman” is used as both a descriptor of the ultra-endurance event and as a noun describing a person who completes the 3.86km swim, 180.25km bike, and 42.20km run. To celebrate crossing the finish line, some athletes tattoo the recognizable Ironman “M-Dot” design to their body. However, individuals with trademark-based tattoos may be vulnerable to infringement claims. The World Triathlon Corporation (“WTC”) owns applications and registrations in Canada for the “M-Dot” trademark and, under Canadian law, copyright interests may subsist in design marks. An action for infringement of a registered trademark can be brought under sections 19 and 20 of the Trade-marks Act. To prove infringement, the trademark owner must establish that: (1) the defendant’s use of the trademark is within the section 4 definition of deemed use; and (2) such use must be use as a trademark. Pursuant to section 4, a trademark is “used” in association with products when products are sold with the trademark displayed on the products themselves or on their packaging, or in association with the products in some other manner at the time the products exchange hands in the usual course of trade. A trademark is “used” in association with services when the trademark

BARTALK / DECEMBER 2017

is displayed during the performance or in the advertising of the services. If “use” is established, then the question is whether the defendant is using the trademark to distinguish its products or services from those of others. For many amateur athletes, bearing the “M-Dot” tattoo would fall short of satisfying the section 4 definition of “use.” Typically, such tattoos are merely ornamental and the individual is not selling products or providing services in connection with the tattoo. However, professional athletes with the “M-Dot” tattoo might be more susceptible to infringement claims. Arguably, displaying the “M-Dot” tattoo during the sale of products or provision of services may trigger infringement if the professional athlete’s tattoo serves to set their products or services apart from those of others. Copyright arises in many different forms, including logos such as the “M-Dot.” It is an infringement of copyright for any person to, without the consent of the copyright owner, produce or reproduce an original work or a substantial part thereof in any material form whatever. Thus, a tattoo may be an infringement of the copyright in a logo. However, it is arguable that the impugned tattoo may not infringe copyright for at least one of the following reasons: (1) implied

consent; and (2) active authorization by the copyright owner. WTC’s Intellectual Property Usage policy1 prohibits unlicensed use of trademarks and copyright owned by WTC. However, WTC’s website posts numerous articles, entitled “Ink of the Week,” that describe the “M-Dot” tattoos of its participants. These pages may incarnate a clash between WTC’s legal and marketing departments. Nevertheless, they arguably provide tattooed athletes with an infringement defence. Consent may be implied from the acts (or omissions) of a copyright owner to operate as an infringement defence provided the inference of consent is clear and comes from the copyright owner. Further, a copyright owner who proactively (for example, through advertising or social media) encourages an infringer in a way that is likely to influence the infringer’s conduct or who expressly approves infringing conduct may actively authorize the infringer to produce or reproduce the copyrighted work. In addition to traditional remedies, a court may grant equitable remedies if infringement is found. Such remedies could theoretically include precluding display of the tattoo or ordering removal. Permission from the right holder is recommended before tattooing any design owned by a third party. ironman.com/triathlon/legal-faq. aspx#axzz4vns7rc94.

Stephanie Melnychuk is an associate and registered patent and trademark agent at Oyen Wiggs Green & Mutala LLP in Vancouver.

feature JEFF YOUNG

Practising Entertainment Law More than just contracts

ntertainment lawyers are most noted for negotiating and closing film/TV deals, music deals or both. The public presumes, correctly, these types of deals require a solid foundation in contract law. However, a good entertainment counsel also needs to understand other areas of law. For example: Intellectual Property. Entertainment products are intellectual property, covered by the law of copyrights and trademarks. Scripts, treatments and screenplays are literary works, movies are dramatic works and underscores are musical works, all covered by copyright law. Brands, merchandise, logos and taglines are all covered by trademark law. Counsel needs a solid understanding of moral rights, infringement, fair dealing (in Canada), fair use (in America), parody and satire, public domain, and music licenses (mechanical, synchronization, master use, public performance, and neighbouring rights). Often, counsel is asked to provide a legal “Chain of Title” opinion, which requires a solid understanding of copyright law. Rights of Publicity and Privacy. The film/TV and music industries trade on the images and reputations of celebrities. This involves rights of publicity.

Counsel needs to understand how such rights work and what value to place on these rights depending on what media and for what duration of time they are exploited in. Biographies, biopics and reality shows trade on stories about the private lives of individuals. Therefore, counsel needs to understand privacy laws – knowing when a life rights agreement is necessary or not. Defamation

(Libel and Slander). Ref-

erences are often made to historic events and people, dead and living. Counsel needs a solid understanding of defamation law in order to understand when a reference is legally permitted or when one crosses the line and becomes potentially defamatory, before that reference is publicized.

Insurance

(General Liability and Errors and Omissions [“E&O”]).

Knowledge of insurance law covering production offices, sets and locations is required. Moreover, counsel is often asked to “clear” a production so it can qualify for E&O insurance coverage by rendering an opinion that complies with the underwriter’s requirements. Corporate and Finance. Counsel is often required to render

extensive corporate opinions to the financial institutions that provide funding for film/TV projects. This requires counsel to have a solid foundation in corporate and commercial law. Employment and Labour. Film sets are big operations and hire a lot of people, including cast and crew. Most cast and crew are unionized and/or represented by guilds. Therefore, to properly represent a production company in the making of a film or TV series, counsel needs to thoroughly understand employment and labour law in all of the jurisdictions that the production is being filmed in. This includes being familiar with the provisions of all relevant collective agreements. Real Estate. All productions need to have a production office and be on a set, and most use outside locations as well. Therefore, it is important for counsel to have a solid understanding of leasing and tenant law. Tax. The budgets of most films made in Canada, especially in BC, depend on eligibility for provincial and federal tax credits, and music deals often depend on accessing grants and subsidies. Counsel needs to be able to structure deals to maximize access to all funding sources. Jeff Young is a member of the Bars of British Columbia and California and practises Entertainment & Media Law at the firm of Altman & Company in Vancouver, Canada. DECEMBER 2017 / BARTALK

membersavings CBABC Members Can Take Advantage of Great Discounts, Special Offers and Exclusive Promotions Visit cbabc.org/Membership/Member Savings for offers and promotions. Check the weekly e-newsletter CBABC News + Jobs for additional seasonal and timely offers. Here are a few of the many offers from our partners:

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AFTER 30 YEARS IN PRINT WE’RE TURNING THE PAGE

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BARTALK / DECEMBER 2017

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©2017 Mercedes-Benz Canada Inc. Shown above is the 2018 GLC 300 4MATIC with optional equipment and wheels. National MSRP starts at $45,900. *Total price starts at $49,060, which includes freight/ PDI of $2,395, dealer admin fee of $595, air-conditioning levy of $100, PPSA up to $45 and a $25.00 fee covering EHF tires, filters and batteries. Vehicle options, fees and taxes extra. Vehicle license, insurance, and registration are extra. Dealer may lease or finance for less. Offer may change without notice. Visit mbvancouver.ca or your local Mercedes-Benz Vancouver Retail Group store for full details or call the MercedesBenz Vancouver Customer Care at 604-351-5290.

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September 11, 2017

feature TAREK ELNEWEIHI

Music Contracts in the Digital Age Lawyers beware

t is no secret that the music business has changed dramatically in the digital age. Among the positive changes has been the opening of new opportunities for both independent artists and entrepreneurs alike. However, while earnest in their desire to bring success to both themselves and their artists, an increasing number of independent startup “record labels” and “publishing companies” have, in many cases, neglected to learn the basics of music law, or hire experienced counsel to advise them of the same. Accordingly, lawyers are encountering more and more poorly drafted contracts offered by such startups that confuse (or ignore) certain important legal concepts in music law or include unnecessary and/or over-reaching terms. The following are examples of the most common issues that lawyers should look out for.

MASTER RECORDING VS. COMPOSITION

The first example relates to the misidentification, incorrect use or absence of the two properties that make up what many laypersons refer to as a “song”: the “composition” and the “master recording.” A red flag should be raised when a lawyer reviews an agreement that references “songs,” but does not distinguish between these distinct items of intellectual property. 18

BARTALK / DECEMBER 2017

Traditionally, the artist’s record label owned (and paid for) the master recording, and the artist’s publisher owned the composition. Nowadays, many independent artists own both properties, largely because the costs relating to recording music is a fraction of what it was prior to computer-based recording. Since each represents a wholly distinct and separate right to receive certain royalties, an experienced lawyer should never allow their client to give away both “for the price of one.” Not to mention the fact that failing to distinguish between the two could give rise to uncertainty of terms (i.e. does “song” mean “composition,” or “master recording” or both?). WRITER’S SHARE VS. PUBLISHER’S SHARE

Another example is the distinction between the “writer’s share” and “publisher’s share” of the right to receive public performance royalties, which is among the most confusing concepts for newcomers to music industry practices. Accordingly, these concepts are often misused or absent from agreements offered by startups. A lawyer reviewing an agreement that includes terms relating to

public performance royalties, but does not mention or distinguish between these concepts, should exercise caution. While the absence of such terms is not determinative of there being a problem (sometimes the concepts are dealt with implicitly), an assessment should be made to determine whether the absence of the same is due to bad drafting, and could therefore prejudice your client. LICENSE VS. ASSIGNMENT

The final example is the unnecessary and/or unjustified inclusion of assignment of rights clauses, when other less “extreme” options may suffice. Traditionally, publishing agreements included a full assignment to the publisher of rights in the artist’s compositions (with the exception of the artist’s right to receive the “writer’s share,” as explained above) in exchange for a share of profits and an advance to the artist. Currently, advances are less commonly offered by startups, and often times the terms of such agreements are for a limited time period. Accordingly, such startups are less justified in requesting an assignment of the artist’s rights, especially given the fact that in many cases, the company could effectively receive the same benefits by way of a publishing administration agreement.

Tarek Elneweihi is a member of the Bar of British Columbia and practises Entertainment & Media Law at the firm of Altman & Company in Vancouver, Canada.

feature MICHAEL E. REID

The Uncertainty of Tomorrow

Can law keep pace with technology?

echnology moves quickly, and law moves slowly. It’s a conundrum that every technology lawyer is familiar with. Our clients push into the unknown daily, and often come up against (or blow right through) the established legal boundaries. And yet the law – statutory, common law and civil – continues to apply no matter the new and novel application of technology on a business practice. As more and more businesses move their offerings into a variety of digital realms, “applicable law” becomes an increasingly amorphous concept. The laws of the land, whether brought into force by legislative bodies, or by judgments in court, are based on the three-dimensional world, bound by borders. International treaties can act to extend these boundaries into a larger aggregate of jurisdictions, but will still be bound by the same dimensional limitations. However, the digital realm of the Internet – and its sinister twin, the Dark Web – exist conceptually in an extradimensional space. None of this is to suggest that jurisdictional laws cease to apply. Today, everything online is still tied to meatspace, through servers, transmission networks, and of course the human beings in control of the whole set-up. But what happens tomorrow when that isn’t necessarily the case?

Take for example the case of websites which service peer-topeer file sharing of pirated music, movies, television, software and various other forms of intellectual property via the BitTorrent protocol. One of the most (in)famous of these piracy websites is The Pirate Bay, which has faced legal challenges throughout its 14-year history. However, while legal challenges have often resulted in the seizure of The Pirate Bay’s servers, cancellation of domain names, or blocking of URLs by ISPs within a certain country, so far workarounds have never been long in coming. New servers can be acquired, new domains registered, new mirror sites uploaded, and new Virtual Private Network’s accessed to circumvent jurisdictionally limited URL-blocking. Frustrating as this game of legal whack-a-mole surely is for opponents of websites like The Pirate Bay, it demonstrates that jurisdictional laws are applicable, but have limited efficacy against technology, which is naturally unaffected by jurisdictional bounds. Now consider tomorrow. Two of the key technologies currently being touted as the next big thing are blockchain and artificial intelligence (or AI). Blockchain – most

commonly known as the backbone of Bitcoin and other nascent cryptocurrencies – is a distributed computing system, which based on its structure allows for decentralized validation. Smart contracts utilizing blockchain networks are already being used to provide certainty in online transactions, delivery logistics, and other fields. AI is currently used in everything from medical diagnostics to self-driving cars to legal due diligence reviews. Will someone figure out a way to use blockchain validation ledgers and AI analysis to create new digital locks to protect intellectual property from piracy? Almost certainly. Will someone else use a blockchain network and AI gatekeepers to set up an impenetrable, unblockable pirate’s den? Inevitably. The question that remains is what role will the law play in tomorrow’s world? What happens once a decentralized, peer-to-peer network, which is self-sustaining, self-replicating and powered by next generation artificial intelligence is launched, and no controllable group of people can be compelled to take it down? Unlike in so many sci-fi movies, the hive mind can’t be defeated by destroying some central processor, as that does not exist in a decentralized network. Law will still apply, but it’s up to us to determine how.

Michael E. Reid practises business law as a partner and Co-Chair, Startups & Emerging Companies at McMillan LLP in Vancouver. DECEMBER 2017 / BARTALK

feature TAMSIN MILEY

Demand Letters from Copyright Trolls Not all may be as it first appears

client comes to you with a demand letter that alleges infringement of copyright. Your client has reproduced an image, in print or online, and the copyright owner is threatening legal action if your client does not pay a large fee within 14 days. Your client is likely the recipient of an infringement allegation from a “copyright troll.” The phrase describes the practice of some stock agencies (or image libraries) of scouring the Internet for any unauthorized use of “their” images and then using the threat of litigation to generate revenue. The claim that copyright has been infringed may be valid. Your client may have overlooked copyright or be unaware of the consequences of “helping themselves” to an online image that is not free for use. Many images available online are free for any use, and these are sometimes labelled “public domain” or “royalty free.” However, some stock agency websites are downright confusing, labelling images as “royalty free” when that turns out not to mean “free” at all. It seems that stock agencies take advantage of the uncertainty as to whether a downloadable image is free or not. Some stock agencies seek out public domain images (which are free), and lay claim to these by posting the images on their own websites, “watermarked” with their brand. 20

BARTALK / DECEMBER 2017

They then charge the public for access and use, and pursue for infringement hapless individuals and organizations who use their images without paying a “licence” fee. In one US case, Getty Images pursued American photographer Carol Highsmith for copyright infringement when she used one of her own photos on her website. She had donated the image to the Library of Congress and placed it in the public domain. That’s where Getty found it before they added it to their own website, watermarked “Getty Images,” and despatched their web crawlers to troll for infringers. Getty backed down on the infringement against

In one US case, Getty Images pursued American photographer Carol Highsmith for copyright infringement when she used one of her own photos on her website. Ms. Highsmith, but maintain their right to sell public domain images to the public. The case illustrates that they were willing to claim fees for public domain images that they had not even indirectly supplied to the user. A copyright troll is not above contriving a basis for standing.

To sue for infringement in Canada, the stock agency must either own the Canadian copyright in the work or hold an exclusive licence to use it from the creator of the image (section 13 of the Copyright Act). In Masterfile Corp. v. World Internett Corp., 2001 FCT 1416, the Toronto-based stock agency, Masterfile, sought summary judgment over copyright in agency photographs misused by a professional website designer. Masterfile argued that it benefited from “deemed” copyright assignments by the agency’s photographers. However, the court found that Masterfile was only an exclusive agent of the photographer, not the exclusive licensee of his copyright, and that the deemed assignments routinely used by Masterfile were not valid under Canadian law. This setback has not deterred Masterfile from initiating more than 50 copyright and trademark actions, but this case remains the only action to have proceeded. A careful lawyer will treat a demand letter with healthy skepticism; faced with such a letter, the stock agency should always be asked to demonstrate title to copyright in the image complained of. This may be enough to end the matter. If a payment must be made, be aware that stock agencies charge an inflated retroactive licence fee for alleged infringement, and the fee initially demanded should always be negotiated. Tamsin Miley practises higher education and intellectual property law from her home office on Bowen Island.

feature STEPHEN FERANCE

Patent Law Trade Negotiations Breaking a promise to regain trust

s NAFTA renegotiations progress, the utility requirement of Canadian patent law will inevitably arise. Canada is the only G7 country listed in the US Trade Representative’s “Special 301 Report Watch List,”1 which “identifies foreign trading partners where IP protection and enforcement... deteriorated or remained at unacceptable levels and where market access for Americans who rely on IP protection has been unfairly compromised.” The utility requirement accounts for the majority of the report’s discussion of Canada. Section 2 of the Patent Act requires an invention to be “useful.” This utility requirement has diverged from international norms over the last 15 years, as courts imposed onerous standards that invalidated numerous patents for inventions of undeniable utility. A recent Supreme Court decision, however, has significantly mitigated this problem. In 1981, Canada’s Supreme Court ruled that, “‘not useful’ ... means ‘that the invention will not work, either in the sense that it will not operate at all or, more broadly, that it will not do what the specification promises that it will do.’”2 Thus, utility had a primary branch, similar to international standards and satisfied by any useful result, and a secondary branch, which would invalidate the patent for failure to deliver a

promised result, even if it delivered other useful results. This secondary branch of utility became known as the “promise doctrine.” It was rarely applied3 until 2002, when the Supreme Court’s AZT decision4 imposed new, onerous standards for the “what, where and when” of the required proof of utility: utility must be either demonstrated or soundly predicted.5 A sound prediction requires “proper disclosure”6 in the patent of the factual basis and reasoning, and utility must be established by the priority date of the patent, without after-the-fact validation.7 When conflated with the promise doctrine, these new requirements armed the generic drug industry with a formidable new arsenal to attack innovative pharmaceutical patents for undeniably useful drugs. Although patentees could normally establish utility under the primary branch, this no longer mattered, because the generics could often persuade the court that some stray phrase in the patent promised a specific result, such as reduced side effects. If the promised result was not demonstrated or soundly predicted by the priority date, then the patent would be invalidated, even if the patentee could prove from post-filing evidence that the promised result is achieved.

Earlier this year, the Supreme Court of Canada revisited, and abolished, the promise doctrine. In AstraZeneca,8 the courts below found the patented drug useful for inhibiting acid reflux, but nevertheless invalidated the patent for failure to prove a secondary promise that the drug would work for a wider range of patients with less variation. On appeal, the Supreme Court of Canada struck down the promise doctrine and held that a single use related to the subject-matter of the patent, even a scintilla of utility, will suffice. The court also ruled that the patentee need not disclose the utility of the invention in the patent. Thus, the Supreme Court watered down the “what” and “where” of utility but reaffirmed the “when,” maintaining the prohibition against after-the-fact validation through post-filing evidence. AstraZeneca should appease American concerns. The death of the promise doctrine ensures that patents for inventions proven useful from the outset will not be invalidated for failure to provide timely proof of some secondary advantage. The court’s ongoing prohibition against after-the-fact validation, however, continues to set Canada apart from many other countries, setting the stage for further discussion at the negotiating table. Roll over footnote numbers above for more information.

1-8

Stephen Ferance is a partner in the Intellectual Property Law group in the Vancouver office of Gowling WLG (Canada) LLP. DECEMBER 2017 / BARTALK

feature TRAVIS DUDFIELD

Is Winter Coming for Piracy Websites in Canada? The great Internet battle rages on

“

Bell wants Canadians blocked from piracy websites.” This CBC headline screamed across the screen on September 27, 2017. The article explained how Bell is trying to force the federal government to block users from accessing illegal content on the Internet and increase the penalties for violators. The issue is complex since technology evolves much faster than the law, which puts content rights holders, like Bell, in a defensive position. As the article states: “[Bell] said the current provisions in the Copyright Act do not necessarily apply to newer forms of digital piracy.” One of these “newer forms of digital piracy” is an Android box that allows a user to connect to myriad piracy sites that stream content illegally. Copyright holders in Canada can sue infringing websites, but there is currently no way to completely block users from accessing piracy websites. What makes this battle even more difficult is the speed at which technology pivots around anti-piracy tactics like geoblocking. Changing your geo-location with a Virtual Private Network (“VPN”) is almost as easy as setting up a Netflix account and is technically illegal in Canada. On January 2, 2015, the Copyright Modernization Act came into force to “address the challenges 22

BARTALK / DECEMBER 2017

and opportunities of the Internet.” Later that same year, the Office of Consumer Affairs launched the “Notice and Notice Regime” which “formalizes a voluntary practice aimed at discouraging online copyright infringement.” These notices are hitting inboxes with greater frequency, especially with the premier of every new season of Game of Thrones, and they use aggressive language like “under penalty of perjury... we are authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.” However, as stated on the Office of Consumer Affairs website, “The Notice and Notice regime does not

Game of Thrones was pirated more than a billion times and “most of the traffic was generated by unauthorized streaming services.” impose any obligations on a subscriber who receives a notice, and it does not require the subscriber to contact the copyright owner or the intermediary.” In May 2015, CEG TEK International, a “copyright monetization firm” said that piracy rates in Canada drastically dropped after the Notice and Notice regime began.

Michael Geist, Canada Research Chair in Internet and E-Commerce Law, noted that CEG TEK is the “leading notice sender” under the Notice and Notice regime. The threat, even without obligation, seemed to have the desired effect. Fast forward two years and it’s fair to ask why Bell is now pushing for the federal government to block access to sites that as Geist himself says, “raises all kinds of Charter of Rights and Freedoms issues.” This is where we have to speculate. Bell owns the rights to HBO content in Canada. As reported by TorrentFreak.com on September 5, season 7 of Game of Thrones was pirated more than a billion times and “most of the traffic was generated by unauthorized streaming services.” This is a staggering number. Content rights holders look at those numbers and must only see total loss of revenue, which may be why Bell is pushing the federal government to take stronger action. The debate will continue to rage on Reddit and in Ottawa, but there doesn’t seem to be any viable solution let alone a consensus on how to force Canadians to only access content through legal means when the illegal alternative is a couple of clicks away. Case in point: visit TorrentFreak and you will see the site is sponsored by several popular VPN services. Click here to see Bell’s Notice and Notice regime. Travis Dudfield is CBABC’s Digital Content Coordinator.

news&events EVENT RECAP

2017 Mentorship Receptions UBC, TRU and UVic

Peter A. Allard School of Law, UBC – Mentorship Reception and Scholarship Presentations – October 26 at Law Courts Inn (L-R): Dean Catherine Dauvergne (Peter A. Allard School of Law); Claire Stewart-Kanigan (winner, 2017 CBABC Entrance Award); Bill Veenstra (CBABC President); Michelle Perini (Careers Committee CBA Student Representative)

Thompson Rivers University – Mentorship Reception – October 11 at TRU campus (L-R): Brad Morse (TRU Dean of Law) and Bill Veenstra (CBABC President)

University of Victoria – Mentorship Reception & Scholarship Presentations – October 24 at Hotel Grand Pacific in Victoria (L-R): Nicole Cooper (winner, Lawyers Financial Law School Achievement Award) with Bill Veenstra, CBABC President

(L-R): David Schecter (winner, CBABC Entrance Award) with Bill Veenstra, CBABC President

DECEMBER 2017 / BARTALK

news&events

NOTICE TO THE PROFESSION

NEWS

CBABC WLF Update The CBABC WLF Chair (Kathryn Sainty, QC) and Vice-Chair (Daria Batkin) were privileged to attend a meeting in Calgary of WLF chairs from across Canada, followed by the 2017 CBA Leadership Conference for Professional Women. Look out for a write-up of these two events in the upcoming CBABC WLF Winter Newsletter to be published in February. The CBABC WLF mentoring program remains strong and the Mentoring Committee recently matched 78 new mentoring pairs. As part of the CBABC WLF’s plan to move some of our events outside of Vancouver, we recently held a “Fall Mingler” at Backyard Vineyards in Langley. This event attracted almost 60 women lawyers, most of whom practice outside downtown Vancouver, to come out and network (all while sipping fabulous wine and eating wonderful food).

Judicial Council Adopts Online System for Provincial Court Appointment Applications On September 5, 2017, the Judicial Council of BC adopted an online application process for all judicial appointments to the Provincial Court (“Court”): judges, judicial justices, and justices of the peace. The Court no longer accepts paper applications. Online application forms are available on the Court’s website: provincialcourt.bc.ca. After creating a user account, applicants can save their work, log out, and log back in to resume filling out their application. With the exception of a medical release form, all supplementary forms are also completed online. Once an application is submitted, the Court acknowledges receipt with an email, attaching a PDF copy of the application. After the application has been accepted for processing the Court emails a second confirmation to the applicant. To date there have been no technical problems with the online application process. Feedback from a user survey has been positive, and helpful suggestions have led to some improvements. The Provincial Court is one of a handful of courts in the world pioneering online applications. Judicial Council and the Court continue to make business process improvements by using technology to create efficiencies and more effective use of internal resources. Get more information on this initiative from the Court’s website.

CBA WEST 2017 Thank you to all our sponsors! Premier & Gold Platinum Lawyers Financial | Do Process Software Ltd. | Veritas Litigation Support Additional Sponsors The Counsel Network | CBA Wellness | Field LLP Wise Scheible Barkauskas | MDD Forensic Accountants Miller Thomson LLP | Canadian Process Serving Inc. DAS Canada | Mathews Disndale & Clark LLP

BARTALK / DECEMBER 2017

BC LEGISLATIVE UPDATE

ACTS IN FORCE

Current from August 16, 2017 up to and including October 31, 2017 The full version of Legislative Update is now only published online and is available exclusively to CBA members at cbabc.org. BUILDING ACT, S.B.C. 2015, C. 2 Sections 47, 49, 56 and 57 are in force December 15, 2017 ENVIRONMENTAL MANAGEMENT AMENDMENT ACT, 2016, S.B.C. 2016, C. 20 Act, except section 3 insofar as it repeals section 79 of the Environmental Management Act, is in force October 30, 2017

BRANCH & BAR

Calendar

DECEMBER

1 Welcoming Ceremony for The Honourable Madam Justice Barbara Fisher — Vancouver 1 8th Annual CBABC Aboriginal Lawyers Forum Holiday Banquet — Vancouver 15 Executive Committee Meeting — Vancouver

JANUARY 26 Executive Committee Meeting — Vancouver 27 Provincial Council — Richmond

CBA NATIONAL MAGAZINE

What is Cyber Warfare, Exactly? They’ve become commonplace nowadays: headlines announcing the spread of a virus or the hacking of an important website or institutional database. These occurrences can be debilitating for private and public sectors alike and, yet, no official law or treaty exists to regulate them. Given the speed at which technology develops, it is not surprising that existing frameworks and regulations do not account for all of the ways in which cyber warfare can be waged. Increasingly sophisticated technology has made lives easier in many respects but has also given nefarious parties countless methods to disable services and institutions in ways that could seriously harm us. Now that so many aspects of our lives are lived through the use of technology, it is reasonable to assume that an increasing amount of attacks will come by way of cyberspace – in fact, Forbes has deemed 2017 the year of cyber warfare. Read the full article uuu

CBA NATIONAL MAGAZINE

What’s Up With the Bread Price-Fixing Investigation? The Competition Bureau and RCMP raided the offices of several companies in Canada’s grocery industry on suspicion of price-fixing of packaged bread products. According to the Competition Bureau, the raid was “based on evidence that there are reasonable grounds to believe that certain individuals and companies have engaged in activities contrary to the Competition Act.” As of yet, no charges have been laid. The investigation was confirmed by grocery companies such as Metro, Sobeys, Wal-Mart and Loblaws. Why does this matter? Price-fixing – or setting the price of a product or service, rather than allowing it to be determined naturally through free-market forces – contravenes provisions 45, 46 and 48 of Canada’s Competition Act. Read the full article uuu

DECEMBER 2017 / BARTALK

news&events TIPS FROM

COMPREHENSIVE ECONOMIC AND TRADE AGREEMENT

The Comprehensive Economic and Trade Agreement (“CETA”) is the free trade agreement between Canada and 28 member states of the European Union. It came into force provisionally on September 21, 2017 by a number of Orders in Council. The expansive legislation aims to eliminate 95% of existing tariffs applied to goods traded between the jurisdictions. Beyond this, CETA impacts many areas of intellectual property law, as well as immigration-related areas. Among the changes, CETA impacts biologic/pharma patents (with numerous amendments to the Patent Act, the Patent Rules and the Patented Medicines [Notice of Compliance] Regulations, as well as the new Certificates of Supplemental Protection Regulations). CETA also impacts trademarks law in Canada, broadening the definition of “geographical indications” under the Canadian Trade-marks Act to protect more than just wines and spirits and include agricultural foods products (such as milk, olives and beer). Practitioners should bring themselves up to speed with the new expansive legislation and corresponding amendments to the various Acts and regulations which have been impacted.

BC’s LEGAL HISTORY by Hamar Foster, QC

LOOKING BACK IX:

A Dirge for Mary Jane Canada’s confused marijuana laws may with some justification be described as liberal. Forty years ago, not so much. In 1974, the police found Bob and Gary “dirging” hashish, i.e., burning cannabis resin on heated knives and inhaling the smoke through a tube. Because each of the 20 year olds had to take a turn holding the knives while the other inhaled, the Crown charged them not only with possession of cannabis resin but possession for the purpose of trafficking. The trial judge convicted. The Court of Appeal agreed: the definition of “traffic” in the relevant legislation meant, inter alia, to “administer” a drug; and because the appellants were administering the drug to each other they were both guilty of possession for the purpose of trafficking. Neither the trial judge (who imposed only a fine and probation) nor the appellants thought this made sense. The judge noted that he did not have to agree with the precedents supporting conviction but was bound by them. Bob (who sounds like he took Law 12 in high school) called what they did a “technical trespass.” Gary also thought they were being convicted on a technicality. So did Seaton, JA, who dissented. The maximum penalty was life imprisonment, he said, so the sentence indicated this was not what Parliament had in mind when it made trafficking an offence. Nor did “administer” have to be interpreted so broadly. But even if it did, the person administering the drug was the person inhaling, and one cannot traffic to oneself. Seaton concluded: “There is good reason to refuse to enlarge an offence to include conduct most people would say does not fall within it. It causes lack of respect for the law and this case demonstrates that point.” Indeed. Further reading: Regina v. Eccleston and Gianiorio, (1975) BCJ No. 1062.

BARTALK / DECEMBER 2017

announcement LAW FOUNDATION LAW FOUNDATIONOF OFBRITISH BRITISH COLUMBIA COLUMBIA

2018–2019 Law Foundation Graduate Fellowships The Law Foundation will issue up to four graduate fellowship awards of up to $15,000 for the 2018-2019 academic year. Applicants must either be: graduates of a British Columbia law school; members of the British Columbia Bar; currently attending, or will be attending at the time of their Fellowship, a graduate program at UBC or University of Victoria law school (with the exception of a graduate program whose purpose is to provide National Committee on Accreditation equivalency to practice law in Canada); or, residents of British Columbia. For the purposes of the Fellowships, a resident of BC is anyone who is a permanent resident of Canada, and either currently resident in British Columbia or a person who has been resident in British Columbia for a significant amount of their life. In order to be eligible, applicants must devote themselves primarily to their full-time graduate studies in law or a law-related area. Please note that a person who is a current recipient of a Legal Research Fund grant from the Foundation is ineligible to receive a Graduate Fellowship. The Fellowships are available for the 2018-2019 academic year. If a recipient’s program of study extends beyond one year, he/she may apply for a second Fellowship in the next year’s competition. An award of a Fellowship for the first year of study does not constitute a commitment for further funding. Applications will be assessed by the Fellowships and Research Committee composed of a minimum of three Governors of the Law Foundation and one representative from each of the law faculties of Thompson Rivers University, the University of Victoria and the University of British Columbia. In assessing applications, the Committee will consider not only a candidate’s academic achievements but also the likelihood of furtherance of the objectives of the Law Foundation and the possible benefits to the public of British Columbia of making an award to a candidate. It is a condition of the Fellowship that a recipient submit two reports to the Law Foundation: an interim report on the program of study following the first term; and a final report, within three months of the end of the academic year on the program of study undertaken, the results obtained and the future career plans of the recipient. All applications and supporting material must be received at the Law Foundation offices by 3 pm on January 5, 2018. For more information about the Fellowships and the application process please refer to the Law Foundation website at lawfoundationbc.org (under Funding Available/Graduate Fellowships).

CBA NATIONAL MAGAZINE

Paradise Papers: Tackling Creative Compliance It’s been more than a year since a consortium of news outlets worldwide released details on an international network of tax havens and shelters, some employed by the rich and powerful to avoid domestic taxes, known as the Panama Papers dump. The leaks led to resignations in Iceland, Malta, Spain, and rocked governments the world over. Canada, however, was relatively spared. Read the full article uuu

DECEMBER 2017 / BARTALK

professionaldevelopment

WEBSITE: CBAPD.ORG \\EMAIL: PD@CBABC.ORG \\

CBABC Professional Development courses are designed to meet the needs of lawyers while still maintaining the opportunity to network and advance one’s career, practice and business. We pride ourselves on bringing courses to lawyers that will provide the required components of professional responsibility and ethics, client care and relations, and practice management components for 2017 Law Society reporting.

Upcoming In-Person Seminars Ethics in Action: Practice and Community | Victoria – Surrey – North Shore You asked for it, and we will deliver! Kick off the 2018 LSBC CPD reporting year with two hours of ethics. Following the highly successful ethics-based seminars hosted in partnership with the Penticton and the Victoria Bar Associations this past September, November, and the upcoming session on December 11 in Victoria, the CBABC is collaborating with your local County Bar Associations to bring you more of the much sought-after Ethics in Action seminar. The CBABC and the Victoria Bar Association are coming together to bring three more ethics-centred seminars to Victoria in 2018. The 2017 Victoria seminars were quick to sell out and we hope you too will have an opportunity to join us for one, or more, of the upcoming three sessions. Hosted in the Lower Mainland, the CBABC is working together with the Surrey and the North Shore Bar Associations to bring these seminars to your community.

So, let us ask, what would you do if it were YOU, who was facing an ethical dilemma? Our speakers will challenge you with 10 ethical scenarios, identifying real life examples while adding actionable strategies to your lawyering toolkit! Put ethics into action by working in groups with real case studies about emerging ethical problems, such as, Cash Rule, Client ID and Verification, Dealing with Inadvertently Disclosed Information, Revealing Confidential Information, Hiring a Private Investigator, Recording a Conversation, Acting for Clients with Diminished Mental Capacity, Communication with Incarcerated Clients, Comments Concerning Previous Client, Quality of Service/Professional Misconduct, Conduct in Personal Life, Unrepresented Litigants, and much more... Explore Ethics in Action with us – cases that could affect your practice and beyond! Dates: to be released soon, so keep an eye out!

Upcoming Webinars Serving Clients with Disabilities If you have had the honour of serving a client with a disability, you know the rewards are many. Among them is the opportunity to think creatively. Whether you are planning a trust, considering someone’s equality rights or balancing multi-faceted issues, there are a wealth of substantive considerations. Then there are the practice related ones: how, as a lawyer, to adapt your practice to people with differing needs and meet your professional obligations. In this session, we will focus on these two distinctive elements: first: what substantive issues arise for people with disabilities and second, how can you ensure that your practice evolves to meet a variety of needs. Date: 2018 – Stay Tuned! Moderator: Meghan A. Maddigan, Law Society of BC

CPD On-Demand – When there are not enough hours in the day! Are you looking to complete you mandatory CPD and ethics requirements but can’t seem to find the time? CBABC’s CPD on-Demand offers you a wide selection of previously recorded programming with self-paced quizzes that are accessible to members and non-members. uuu Visit our newly revamped, user-friendly CPD On-Demand page today and get your access in an instant!

BARTALK / DECEMBER 2017

What’s the best move you can make for your career?

Talk to your Legal Recruiter.

AMRIT RAI

M I K E R AC E

A M B E R YO U N G

Amrit is a Consultant with over 5 years’ recruitment and headhunting experience. She combines her experience gained from private practice and her strong inter-personal skills, placing junior and senior lawyers in both firm and in-house positions in Western Canada.

Mike is our Client Partner for Vancouver. A former lawyer with over 12 years of legal recruitment experience, Mike focuses on acquiring high performing Partners, Associates and teams for law firms, as well as General and Legal Counsel for companies across Western Canada.

With over 5 years of industry experience, Amber is responsible for the recruitment and placement of Law Firm Management professionals, Law Clerks, Paralegals and Legal Assistants for both Private Practice and In-House clients in Vancouver, Calgary and Edmonton.

Consultant (604) 283-9317 arai@zsa.ca

Client Partner (604) 283-9316 mrace@zsa.ca

Consultant, Support Services (604) 283-9318 ayoung@zsa.ca

In-House. Private Practice. Opportunities for entry level to senior lawyers.

zsa.ca

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DECEMBER 2017 / BARTALK

british columbia

LEGAL OPPORTUNITIES

LITIGATION ASSOCIATE | 2 – 7 YEARS | OKANAGAN Ever thought of getting out of the rat race? This is a chance to continue working on the kind of top level commercial litigation and corporate insurance work which you’d normally only find in major cities like Vancouver or Calgary, but enjoy the beautiful outdoors lifestyle, strong community and affordable housing of the Okanagan. Our client is a firm with national offices which transacts some of that work from out of their Okanagan office. You’ll be working with some of the most highly regarded partners in the country in this space, on major complex interesting litigation matters. If you are a commercial litigation or corporate insurance (construction, environmental, professional or product liability) associate with between 2 and 7 years experience who might be looking to get out of the city, contact us. Contact: Mike Race - mrace@zsa.ca - Ref. #BT27441.

CORPORATE COMMERCIAL ASSOCIATE | 5 – 7 YEARS | VANCOUVER We are currently working with a top-end corporate boutique firm in downtown Vancouver, all ex big-firm lawyers and the highest quality of clients and matters. They are a true alternative to the major firms, except you will be part of a smaller collegiate culture and environment, as well as the ability to fast-track your career and ultimately inherit a practice. The firm is currently looking for a bright and entrepreneurial Corporate Commercial associate with 5 to 7 years of post call experience, with a background practising at a strong firm. Contact: Mike Race - mrace@zsa.ca - Ref.# BT3561.

BARISTER/SOLICITOR | 5 – 7 YEARS | VANCOUVER Our client, a leading government organisation, is seeking a lawyer with 5 to 7 years of experience representing entities in civil litigation as well as regulation and enforcement proceedings, exposure to First Nations matters is considered an asset. This is a rare opportunity to work in-house, and do meaningful work in a supportive and value driven legal team. Contact: Amrit Rai - arai@zsa.ca - Ref. #BT26896.

FAMILY LAW PARTNER OR ASSOCIATE | 5 – 15 YEARS | VANCOUVER Our client, a well-established downtown Vancouver law firm is seeking an experienced Family lawyer to join their team. The successful candidate will have between 5 and 15 years’ experience in family law. The firm has a very busy practice, so they need someone who can come in and take over the running of files themselves, often dealing with high net worth clients. This is a significant succession opportunity to inherit the practice over time, from one of the top-rated senior family lawyers in town. Contact: Mike Race - mrace@zsa.ca - Ref. #BT26778.

BUSINESS LAW ASSOCIATE | 8 – 15 YEARS | LANGLEY Our client, a long established Langley law firm, is seeking a senior business associate to join their small team and a highly collegiate culture. This is a fantastic opportunity to acquire a partial practice! Our client is looking to hire an entrepreneurial individual who is keen to build upon the solid foundation provided by the firm who can provide a good source of quality clientele in a growing & prosperous neighbourhood. The ideal candidate will have 8-15 years of experience in corporate commercial law, real estate, and residential conveyancing. Wills & Estates experience is a bonus. Contact: Amrit Rai - arai@zsa.ca - Ref. #BT27444.

WILLS & ESTATE PLANNING PARTNER OR ASSOCIATE | 5 – 20 YEARS | VANCOUVER A terrific succession opportunity to inherit a partial practice from a well-regarded senior Wills & Estates practitioner looking to retire. Our client is a long established Vancouver full-service business law firm with a highly collegiate culture. If you have significant experience in the area, this is a great chance to join an outstanding Wills and Succession Planning practice in a senior capacity, and enjoy the benefits of the existing clients as well as referrals from the other practice groups. Contact: Mike Race - mrace@zsa.ca - Ref. #BT27272.

zsa.ca

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BARTALK / DECEMBER 2017

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Established in 1973, Kane, Shannon & Weiler has become a prominent law firm in the Fraser Valley. With offices in Surrey, White Rock, and Abbotsford, we have deep roots in our communities. Our twenty six lawyers carry on a broad practice with an emphasis on civil litigation, corporate/commercial, taxation, wills & estates, and real estate.

Our commitment to providing quality service has earned us the loyalty of our clients and a steady flow of work. Consequently, we are currently seeking the following litigator to join our firm: ICBC DEFENCE LAWYER — We have positions available in our Surrey office for an INTERMEDIATE or SENIOR COUNSEL with experience representing ICBC. Strong file management skills, a good work ethic, and a good sense of humour are considered an asset.

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DECEMBER 2017 / BARTALK

barmoves Who’s Moving Where and When Maneesha Dakha

Christopher Ross

joined McMillan LLP as an associate with their Business Law group. Maneesha was called to the BC Bar on September 12, 2017.

joined DLA Piper (Canada) LLP’s Tax group. Christopher practises corporate and personal income tax, with particular emphasis on corporate reorganizations, mergers and acquisitions, and personal tax and estate planning.

Ruth Nieuwenhuis

Aman Dhesi

joined McMillan LLP as an associate with their Advocacy & Employment group. Ruth was called to the BC Bar on September 12, 2017.

joined the Vancouver office of Miller Thomson LLP as an associate practising corporate law.

Angela Yousofi

Natalie Pawson

joined McMillan LLP as an associate with their Capital Markets group. Angela was called to the BC Bar on September 12, 2017.

joined the Vancouver office of Miller Thomson LLP as an associate in the Real Estate group.

Zargar Lawyers + Business Strategists invites you to take that crucial step toward your future goals by joining our team.

uuu Zargar.ca/careers Why do we need you?

We are expanding and transformation requires like-minded team members to help us grow together. You have been contemplating a move for some time, and we are fortunate to have the opportunity to invite you to explore what we can offer to you and your legal practice. By joining our team, you’ll play a key role in our combined and continued success.

Why should you work with us? Regain time to grow your practice or

maintain existing client commitments

BARTALK / DECEMBER 2017

Flexible remuneration and office

support packages to fit your lifestyle Opportunity to obtain control over your work and life Support from other lawyers and in-house CPDs Paralegal and legal administrative support Leading-edge technology Modern office décor and atmosphere located in the heart of downtown Vancouver Medical and dental benefits program Opportunity to develop, learn and grow

Things that matter to us:

Relationships Inclusiveness Client commitments Transparency Tangible results Efficiency

What expertise do we require?

Corporate/Commercial Securities Corporate Finance Banking

Tax Labour and Employment

Bar Moves space is at a premium and available for free to members on a first-come first-served basis, so send your Bar Move (max. 30 words) and a high-resolution headshot photo to bartalk@cbabc.org now.

TO VIEW ALL BAR MOVES GO TO CBABC.ORG/BT/BM_1712.

Alan Monk joined EKB as associate counsel, practising in the areas of securities, corporate and commercial, and mining law.

Elizabeth Holden joined the Vancouver office of Miller Thomson LLP as an associate in the Capital Markets & Securities group.

David Gordon has joined Clark Wilson LLP’s Tax group. David will be providing tax-efficient solutions that consider their clients’ complete corporate circumstance, from their technology and sales to their operations and management.

Ryan R. Chalmers joined Aird & Berlis LLP as a partner in the Infrastructure group, working in both Toronto and Vancouver.

Nabil Virji

newmembers September & October 2017 Lawyers Neha Bains Surrey Jora Bhullar Richmond Rebecca Butt Kwasnicki Law Kelowna Morne Coetzee Miles, Zimmer & Associates Cranbrook Kanchan Dhahan Kanchan K. Dhahan Law Corporation Surrey Jasmin Dhillon Jasmin Dhillon Law Corp. Richmond Dharampreet Dhillon McMillan LLP Vancouver Kaitlyn Kastelic Digby Leigh & Company North Vancouver Robyn Laing SHK Law Corporation Vancouver Duncan McIntyre Victory Square Technologies Inc. Vancouver Paul G. Morgan Wilson Marshall Law Corp. Victoria

Christopher Ness Hammerberg Lawyers LLP Vancouver Jane Otterstrom Touchstone Law Group LLP Kelowna Hiva Parandian Access Law Group Vancouver Arash Rai AKR Law Corporation Abbotsford Laesha Smith BC Securities Commission Vancouver Jordan Thompson Fasken Martineau Vancouver Alexandra Watkins Maple Ridge Wendy Zhang Gall Legge Grant & Zwack LLP Vancouver

Articling Students Jordan Adam Polygon Homes Ltd Vancouver Melis Bittman McCarthy Tétrault LLP Vancouver View all of the new CBABC members online

Transforming the legal landscape

joined Miller Thomson’s Vancouver office as an associate in the Business Law group.

www.wcel.org DECEMBER 2017 / BARTALK

RETURN REQUESTED TO: The Canadian Bar Association, BC Branch, 10th Floor, 845 Cambie Street, Vancouver, BC V6B 5T3