ETIPS® NEWSLETTER’S “2024: YEAR IN REVIEW”

Thank you for your readership over the last year and welcome to what we hope will be an even better 2025! 

In this year’s first issue of the E-TIPS® Newsletter, we will recap our most noteworthy reports from 2024, covering developments in intellectual property and information technology law under the following categories: (1) Supreme Court of Canada Matters, (2) Legislative, Treaty and Policy Developments, (3) Patents, (4) Trademarks, (5) Copyright, (6) Privacy and Cybersecurity, and (7) Artificial Intelligence.

This issue of E-TIPS® Newsletter’s “2024: Year in Review” is brought to you by M. Imtiaz Karamat, Steffi Tran, and Claire Bettio.  Remember, all of our past coverage – over 20 years’ worth – is accessible in our archive.

     1.  SUPREME COURT OF CANADA MATTERS

IP Addresses Attract A Reasonable Expectation Of Privacy

In March 2024, the Supreme Court of Canada (SCC) in R. v Bykovets, 2024 SCC 6, found that an Internet Protocol (IP) address attracts a reasonable expectation of privacy, and a request for an IP address from the state constitutes a “search” under section 8 of the Canadian Charter of Rights and Freedoms (the Charter). In its analysis, the SCC focused on the private nature of the subject matter, noting that IP addresses may betray deeply personal information about the user and their online activity. Ultimately, the SCC concluded that “the burden imposed on the state by recognizing a reasonable expectation of privacy in IP addresses pales compared to the substantial privacy concerns implicated in this case”. The SCC further held that a reasonable and informed person would conclude that IP addresses should attract a reasonable expectation of privacy. Our full report on the decision can be found here.

No Magic Words Needed To Exclude Implied Conditions Under Ontario’s Sale Of Goods Act

In May 2024, the SCC in Earthco Soil Mixtures Inc. v Pine Valley Enterprises Inc., 2024 SCC 20, found that contracting parties can vary or exclude implied conditions under Ontario’s Sale of Goods Act (SGA) by an express agreement without requiring specific wording. In this case, Pine Valley Enterprises Inc. (Pine Valley) purchased topsoil from Earthco Soil Mixtures Inc. (Earthco) and, due to its urgent need for the materials, did so without obtaining updated laboratory reports. When Pine Valley later discovered defects in the topsoil, it sued Earthco for breach of contract. The parties' agreement, however, contained exclusion clauses that stated if Pine Valley waived its right to test the topsoil, then Earthco would not be liable for its quality.

The SCC found that: (i) the parties’ agreement constituted a sale of goods under section 14 of the SGA and the implied condition that goods must correspond with their description applied in this case; but (ii) pursuant to section 53 of the SGA, the exclusion clauses in the parties’ agreement operated to expressly contract them out of that implied condition. The SCC also noted that the objective intention of the parties must be the paramount consideration when interpreting exclusion clauses. Click here for our full report on the decision.

     2.  LEGISLATIVE, TREATY AND POLICY DEVELOPMENTS

Government Of Canada Introduces Bill C-63, The Online Harms Act

In February 2024, the Government of Canada introduced Bill C-63, the Online Harms Act. Bill C-63 aims to hold social media platforms accountable for harmful content hosted on their platforms and create stronger online protections for everyone in Canada, especially children. Specifically, Bill C-63 would subject social media services to a duty: (i) to act responsibly; (ii) to protect children; and (iii) to make certain content inaccessible. To read our report on this topic, click here.

Bill C-63 is currently at its second reading in the House of Commons.

Important Food And Drug Regulatory Changes “Hidden” In Omnibus Budget Bill

In April 2024, the Government of Canada introduced Bill C-69, the Budget Implementation Act, 2024, Division 31, which makes significant changes to the power of the Minister of Health to decide on drug and other health product approvals. In essence, this Bill allows the Minister of Health to permit or ban import, advertising, manufacture, preparation, packaging, and labelling, of any “Therapeutic Product” (which includes drugs, medical devices, and natural health products), dramatically changing Canada’s current approval process for these products. Click here to read our report on this matter.

Bill C-69 received royal assent on June 20, 2024.

Federal Court Updates Practice Notice Regarding Use Of AI In Court Proceedings

In May 2024, the Federal Court (FC) issued an updated practice notice on the use of artificial intelligence (AI) in court proceedings. This update was intended to address issues raised by the FC’s Artificial Intelligence Working Group, particularly issues related to the FC’s requirement for court-submitted materials to have a Declaration in the form prescribed in the notice whenever they contain content created or generated by AI. Click here for a summary of this topic.

CIPO’s Proposed Amendments To Patent Rules Offer Details For Canada’s New Patent Term Adjustment System

Also in May 2024, the Canadian Intellectual Property Office (CIPO) published proposed amendments to the Patent Rules and other regulations, providing details on Canada’s new patent term adjustment (PTA) system. The PTA system, which is intended to compensate patent owners for unreasonable delays in CIPO’s processing of patent applications, took effect on January 1, 2025. The proposed amendments fill in gaps not addressed in the PTA system framework set out in the Patent Act, and specifically address the process for obtaining an additional term and determining its duration and associated fees. To read more about this matter, click here.

Trademarks Opposition Board To Launch New Section 45 Pilot Project In January 2025

In December 2024, CIPO announced that the Trademarks Opposition Board (TMOB) will launch a pilot project in January 2025 where the Registrar of Trademarks will proactively send section 45 notices to randomly selected trademark registrations. Failure to respond to such a notice will result in the cancellation of the trademark registration. After a statistically significant number of cases, the TMOB will hold consultations to gather feedback. The aim of this project is to identify trademarks that are no longer in use and ensure the trademarks register accurately reflects active trademarks. For more information, visit the pilot project landing page and consult the associated practice notice.

Ontario Government’s Fourth Working For Workers Act Addresses AI In Hiring Process

In March 2024, the Ontario Government passed the Working for Workers Four Act, 2024, which will amend the Employment Standards Act to require Ontario employers to disclose in publicly advertised job postings whether AI is being used in the hiring process to screen, assess, or select applicants. Further, it will require employers to disclose the compensation range of advertised positions in their job postings and retain copies of their publicly available job postings for a minimum of three years. Our full report on this matter can be found here.

The new requirements for job postings under the Working for Workers Four Act will come into effect on January 1, 2026.

Québec Government Publishes Final Version of Bill 96 And Clarifies Trademark Requirements

In June 2024, the Québec government published the final version of the Regulation to amend mainly the Regulation respecting the language of commerce and business (the Regulation), clarifying some uncertainties raised by Bill 96 regarding non-French trademark use in Québec. Notably, the Regulation reintroduces the “recognized” trademark exemption for both registered and unregistered trademarks, which Bill 96 initially intended to limit to only registered trademarks. The Regulation also clarifies the definitions of several key terms used in Bill 96 (such as “generic term”, “description of the product”, and “markedly predominant”). Click here to read our full report on this topic.

The trademark requirements under Bill 96 and the Regulation are set to come into force on June 1, 2025.

     3.  PATENTS

Federal Court Of Appeal Clarifies Scope Of “Use” Under Patent Act

In April 2024, the Federal Court of Appeal (FCA) in Steelhead LNG (ASLNG) Ltd. v Arc Resources Ltd., 2024 FCA 67, clarified the scope of “use” under section 42 of the Patent Act. In this case, Steelhead LNG (ASLNG) Ltd. and Steelhead LNG Limited Partnership (collectively, the Appellants) argued that by disclosing drawings, specifications and cost estimates of the Appellants’ patented design to potential investors, Arc Resources Ltd. et al. (the Respondents) violated their rights under the Patent Act. The FCA, however, concluded that the Respondents’ activities did not constitute “use” under section 42 of the Patent Act, and, therefore, were not a violation of the Appellants’ rights. Specifically, the FCA found that exploiting the goal, purpose, or advantage of a patented invention for commercial benefit does not constitute an infringing “use” under section 42. Our summary of this decision is available here.

Federal Court Of Appeal Clarifies Principles For Awarding Remedies For Patent Infringement

In August 2024, the FCA in Rovi Guides, Inc. v Videotron Ltd., 2024 FCA 125, upheld a lower court’s finding of patent invalidity and reviewed the principles for awarding remedies for patent infringement. The FCA clarified, among other principles, that a successful patentee is prima facie entitled to an accounting of profits unless there exist “sufficient compelling reasons” to deny such a remedy. Click here to read our full report on this decision.

Federal Court Of Appeal Upholds Lower Court Decision Finding No Patent Owner

Also in August 2024, the FCA in Mud Engineering Inc. v Secure Energy Services Inc., 2024 FCA 131, upheld a lower court decision dismissing both a motion for a declaration of patent ownership and a related patent infringement action. At trial, the lower court found that neither party led sufficient evidence to obtain a declaration of patent ownership, and that Mud Engineering Inc. et al. (collectively, Mud Engineering) therefore lacked standing to pursue an infringement action. On appeal, Mud Engineering argued that the lower court decision led to the absurd result that neither party owned the relevant patents. However, the FCA found that the lower court was entitled to decline to issue a declaration of patent ownership, noting that this decision does not leave the parties without a remedy for infringement as it binds the parties in the case only against each other and not against third parties. Our full report on the decision is available here.

Artificial Neural Network Found Not Patentable In The United Kingdom

In July 2024, the England and Wales Court of Appeal in Comptroller General of Patents, Designs and Trade Marks v Emotional Perception AI Ltd, [2024] EWCA Civ 825, found that a trained artificial neural network (ANN) is not patentable pursuant to the “program for a computer” subject matter exclusion under the United Kingdom’s Patents Act. While the court acknowledged that the ANN was unlike a “conventional computer”, the court nonetheless found that it constituted a set of instructions for a computer to process information (i.e., a “program for a computer” within the purview of the exclusion). The court emphasized that its decision does not mean ANN-implemented inventions are unpatentable, but that such inventions are in the same position as other “computer implemented inventions” under the United Kingdom’s patent law and must have a technical contribution to be patentable. Click here to read our full summary of the decision.

     4.  TRADEMARKS

BC Supreme Court Awards Damages For False And Misleading Amazon Infringement Notices

In January 2024, the British Columbia Supreme Court (BCSC) in Keezio Group, LLC v The Shrunks’ Family Toy Company Inc., 2024 BCSC 64, awarded damages for false and misleading trademark and copyright infringement complaints filed with Amazon. Amazon initially delisted Keezio Group, LLC’s (Keezio) products after The Shrunks’ Family Toy Company Inc. filed complaints against Keezio, alleging trademark and copyright infringement. The BCSC determined that these infringement allegations were unfounded and awarded Keezio damages based on their loss of profits for the lost sales during the delisting period. Click here to read our report on this decision.

Two Rare Interlocutory Injunctions Issued By Provincial Courts

In January 2024, the BCSC in Amer Sports Canada Inc. v Adidas Canada Limited, 2024 BCSC 3, granted an interlocutory injunction preventing Adidas Canada from using a mark featuring the term “TERREX”. The plaintiff, Amer Sports Canada, owns the registered trademark ARC’TERYX and alleged trademark infringement against Adidas for their use of their mark that featured “TERREX,” seeking an order for an interlocutory injunction. In applying the test for interlocutory injunctions, the BCSC found that the plaintiff would suffer irreparable harm from Adidas’ continued use of its mark, as the distinctiveness of the plaintiff’s trademark would be virtually impossible to regain once lost. The decision constitutes a rare case of a court issuing an injunction in a trademark matter before trial.

Another rare interlocutory injunction was issued in March 2024 by the Superior Court of Québec in Fonds GB c 9451-3082 Québec Inc., 2024 QCCS 1122, where the court granted Fonds GB’s application for an interlocutory injunction enjoining 9451-3082 Québec Inc. (9451 Québec) from using the trade name and trademark “Café Constance”. The dispute stemmed from a lease agreement between the parties where the leased space would include a café called “Café Constance”. The agreement described “Café Constance” in the list of items to be returned to Fonds GB at the end of the lease term and the parties disagreed on whether this reference to “Café Constance” suggested that Fonds GB was licensing the name to 9451 Québec or it simply referred to a sign on the café. The court ultimately granted Fonds GB’s application, finding that, although both parties would suffer serious prejudice if the other used the name, the balance of convenience favoured Fonds GB.

You can read our summaries for each decision here and here.

     5.  COPYRIGHT

Federal Court Of Appeal Interprets Scope Of Defence Against Moral Rights Infringement

In March 2024, the FCA in French v Royal Canadian Legion (Dominion Command), 2024 FCA 63, clarified the scope of subsection 64(2) of the Copyright Act, which provides a defence against copyright and moral rights infringement for designs applied to useful articles produced in quantities of more than 50. In this case, Leonard French alleged that the Royal Canadian Legion (the Legion) infringed his moral rights by falsely claiming to be the developer of the Poppy Dalmatian Puppy plush toy in the Legion’s catalogue.

The FCA clarified that for there to be an infringement of moral rights, there must be a connection with copyright; if there is no act in connection with copyright, there is no infringement of moral rights. The FCA concluded that if the Legion’s false statement of authorship was associated with a reproduction of the toy, then subsection 64(2) would excuse the infringement of French’s moral rights. Alternatively, if there was no reproduction of the toy associated with the Legion’s false statement, then no infringement of French’s moral rights would exist because the false statement would not be associated with an act in connection with copyright. In either case, the Legion would not be liable for infringing French’s moral rights. Click here for our full report on the decision.

Federal Court Of Canada Issues Dynamic Site Blocking Order Against Unauthorized Streaming Services

In July 2024, the FC in Rogers Media Inc. v John Doe 1, 2024 FC 1082, issued a dynamic site blocking order against unauthorized streaming services (the Unknown Respondents) and certain internet providers. The order permanently enjoined the Unknown Respondents from infringing the applicants’ (including Rogers Media Inc., Bell Media Inc., and FuboTV Inc.) copyright in live sporting events, as well as their copyright in any other works the Unknown Respondents were likely to infringe. It also imposed a two-year injunction on certain internet providers, requiring them to take steps to prevent copyright infringement in the live sporting events. This order differs from previous orders relating to unauthorized streams of live sporting events, as previous applicants have typically obtained time-limited interlocutory injunctions. Our report on this decision can be found here.

     6.  PRIVACY AND CYBERSECURITY

Ontario Court of Appeal Finds No Reasonable Expectation of Privacy in Vehicle Black Box Data

In August 2024, the Ontario Court of Appeal (ONCA) in R. v Attard, 2024 ONCA 616, found that there is no reasonable expectation of privacy in a vehicle’s Event Data Recorder (EDR) data. The ONCA ultimately found that the lawful seizure of a vehicle extinguishes privacy interests in the vehicle and its component parts (including the EDR), noting that an EDR does not contain sensitive information about the driver, nor is the information it holds akin to the personal information found on a computer, cell phone, or location tracker. Click here to read our full summary of the decision.

Federal Court Of Appeal Finds Facebook Breached Canada’s Privacy Laws

In September 2024, the FCA in Privacy Commissioner of Canada v Facebook Inc., 2024 FCA 140, unanimously held that Facebook breached Canada’s privacy laws between 2013 and 2015 by failing to obtain meaningful consent from its users and appropriately safeguard users’ personal information. The Office of the Privacy Commissioner of Canada welcomed the FCA’s decision as an acknowledgement that international data giants “must respect Canadian privacy law and protect individuals’ fundamental right to privacy”. Our full report on this decision is available here.

Cybersecurity

2024 brought several notable decisions related to cybersecurity, including:

• Applying Privacy Tort In Case Of Data Misuse. In January, the ONCA issued its decision in Del Giudice v Thompson, 2024 ONCA 70, considering the tort of intrusion upon seclusion in the context of data misuse. Click here to read our report on the decision.
• Claiming Privilege in Data Breach. In April, the Ontario Superior Court of Justice (ONSC) released its decision in LifeLabs LP v Information and Privacy Commr. (Ontario), 2024 ONSC 2194, finding that health information custodians cannot defeat their responsibilities under the Personal Health Information Protection Act by placing facts about privacy breaches inside privileged documents. The ONSC further found that solicitor-client privilege does not extend to protect facts required to be produced pursuant to a statutory duty. Our full report on this decision is available here.
• Data Breach Class Action Damages. In June, the BCSC released its decision in Ari v Insurance Corporation of British Columbia, 2024 BCSC 964, concluding that a damages award of $15,000 per class member in a data breach class action appropriately constituted a “modest or nominal” award. Read our summary of the decision here.
• Returning Records in Privacy Breach. Also in June, the BCSC released another key cybersecurity decision in British Columbia (Attorney General) v Gondor, 2024 BCSC 1077, ordering the return of electronic records belonging to a public body employer after finding that one of the public body’s former employees made copies of the records and distributed them without authorization. Click here to read our full summary. 

     7.  ARTIFICIAL INTELLIGENCE

Air Canada Found Liable For Inaccurate Advice Given By Website Chatbot

In February 2024, the British Columbia Civil Resolution Tribunal (the Tribunal) in Moffatt v Air Canada, 2024 BCCRT 149, found Air Canada liable for damages after failing to take reasonable care to ensure the accuracy of its website chatbot. This dispute arose after Air Canada’s website chatbot provided Jake Moffatt with inaccurate information regarding the company’s policy for bereavement fares. After relying on the incorrect information to his detriment, Moffatt brought his case to the Tribunal, claiming that he was owed a partial refund for the difference between the regular and bereavement fares of the ticket he purchased. Ultimately, the Tribunal found that Air Canada was liable for negligent misrepresentation, and that Moffatt had suffered damages as a result. Our full report on this decision is available here.

First-Ever AI Human Rights Impact Assessment Tool Based On Canadian Law Released

In November 2024, the Law Commission of Ontario, in collaboration with the Ontario Human Rights Commission, released the first Human Rights AI Impact Assessment tool (the HRIA) based specifically on Canadian human rights law. The HRIA is intended to help public and private organizations evaluate and mitigate the human rights risks associated with AI systems. Click here to read our report on this topic.

International Developments in AI

In February 2024, the USPTO issued its Inventorship Guidance for AI-Assisted Inventions (the Guidance). Although the Guidance states that AI-assisted inventions are "not categorically unpatentable”, it reinforces the notion that only a natural person can be an inventor, and further requires that a natural person must have made a “significant contribution” to every claim in an application in order for it to be patentable. Click here to read our report on this topic.

Lastly (but certainly not least), in March 2024, the European Parliament approved the Artificial Intelligence Act (the AI Act), positioning the EU to have the world’s first binding comprehensive law on AI. The approval of the AI Act constitutes a landmark decision in AI regulation, and we look forward to receiving more updates regarding its adoption as well as future AI laws being implemented in other jurisdictions. To read more about the approval of the EU’s AI Act, click here for our full report.