A $20-million judgment against a website for pirating obituaries may turn out to be a symbolic victory for the families of the deceased, says Toronto business lawyer Bill Northcote.

In her decision, Federal Court Justice Catherine Kane found the now-defunct website had infringed the copyright of class members — families of more than one million Canadians whose obituaries and pictures were reproduced on the website.

“Unfortunately, the likelihood of collection is probably remote, as is indicated by the fact that the website didn’t defend the claim at all,” says Northcote, partner with Shibley Righton LLP’s Toronto office.

He says he was somewhat surprised to see that the judge declined to award punitive damages, given her description of the defendant’s “obituary piracy” as “high-handed, reprehensible and ... a marked departure from standards of decency.”

“I suspect the quantum of the other damages were so high that it didn’t seem appropriate to award, even though there may have been sufficient grounds,” Northcote tells AdvocateDaily.com.

According to Kane’s decision, the website’s terms of service asserted copyright over all its contents and generated profits via advertising for third-party businesses, as well as the sale of flowers and virtual candles for posting on individual obituary pages.

The representative plaintiff wrote an obituary for her father following his death in early 2017 and allowed a funeral home to publish it, only to discover that it had been reproduced on the defendant website without her permission.

“The evidence of many Class Members is that they had written the obituaries in a personal way and that their discovery that the obituaries had been reproduced with the addition of sales of candles and other advertising was an emotional blow to them. In some cases, inconsistent information was added, for example, inaccurate details about the deceased or options to order flowers where the family had specifically discouraged flowers,” the judge wrote.

Following an uncontested trial, the judge ordered a permanent injunction prohibiting the website and its representatives from infringing the copyright of the class members. She also awarded the class $10 million in statutory damages for the copyright violations, plus a further $10 million in aggravated damages.

However, Kane declined to award the plaintiffs any damages for breach of moral rights. Although they had produced plenty of subjective evidence of their embarrassment and anger about the website’s use of their material, the judge found the plaintiffs’ case lacking in terms of the objective evidence required for a damages award based on a breach of moral rights, showing that a person’s honour or reputation has been prejudiced.

“Moral rights is an area of copyright law that seems not to be well-understood among members of the public,” Northcote says. “I would have thought they could have obtained some outside evidence from members of the public, testifying that reputations were tarnished because of the association with commercial elements.”

Still, he says that may not have been enough to meet the burden for moral rights because of the changing nature of advertising in the online world.

“In this day and age, the connection between the copyrighted work and the commercial activity is not always as obvious, because people know that the advertising that pops up may have more to do with the algorithms of Google or whoever else, rather than an endorsement by the author of the work,” Northcote says.

Even his more sophisticated commercial clients struggle with the concept of moral rights, largely because of the significant difference between the U.S. and Canadian copyright regimes.

“I regularly have to explain to clients exploiting commercial rights that moral rights need to be taken into account,” Northcote says. “Licensees who fail to get a moral-rights waiver can get themselves into trouble.”

He says the precedential value of the obituary decision is limited by the fact that the claim was not defended, allowing potentially significant issues — such as the authorship of individual obituaries — to be glossed over.

“I expect that the practice varied quite a bit. In some cases, family members probably wrote them, while in others, it could have been the funeral home,” he says. “If money is ever collected, another proceeding may be needed to adjudicate that issue.”

An American court has ruled there can't be any monkey business involved in the country's copyright laws, says Toronto business lawyer Bill Northcote.

The U.S. Court of Appeals for the 9^th Circuit recently found that American copyright laws do not allow a monkey to hold copyrights, says Northcote, chair of Shibley Righton LLP's business law group.

"From a copyright perspective, the most important point in the case is that the monkey doesn't have statutory standing," Northcote says. In other words, copyright law only covers humans.

The two sides battling over the photos reached a settlement in September and asked the 9^th Circuit to dismiss the case and throw out a lower court ruling in favour of the photographer whose camera was used to take the photographs, according to an Associated Press story.

"The decision really says they want the litigation to proceed," Northcote tells AdvocateDaily.com.

The court suggested the settlement was a way for PETA to avoid a precedent it may not like, he says, adding that the case was precedent-setting because it dealt with an issue not previously looked at — whether a non-human can own a copyright.

Northcote says the court's decision was "pretty critical of the role that PETA played because it really was pursuing its institutional interests rather than interests as the best friend of the monkey."

He notes there's evidence in the ruling that the court had reached a decision before a settlement was reached and decided to vacate that deal.

"At least two of the judges thought it was sufficiently important in the development of the law that they should issue this judgment in the public interest," says Northcote.

The court said a decision in this "developing area of the law" would help guide lower courts, says the Associated Press.

The case centres around a “selfie” taken in 2011 by a Macaque monkey in Indonesia using the camera of a British photographer.

According to an article in The Telegraph, the photographer was taking pictures of a group of monkeys when one named Naruto grabbed his camera and snapped off hundreds of pictures. While most were out of focus, the animal did manage to capture some incredible images in the process, including the infamous monkey's self-portrait.

The stunning selfie went viral and the photograph landed in Wikipedia's royalty-free database. The photographer asked the site not to use the photograph without his permission, but Wikipedia refused, arguing that he didn't take the picture and therefore, it cannot be copyrighted, says The Telegraph.

The People for the Ethical Treatment of Animals (PETA) then filed a copyright infringement lawsuit in 2015, claiming proceeds from the image should be donated to preserve the monkey’s habitat in Indonesia, that the photographer infringed on Naruto's copyright when the animal's picture was printed in a book, and that the organization was the guardian of the monkey's rights in the photograph, says an article in the Washington Post.

The appeal court found "the animal had constitutional standing but lacked statutory standing to claim copyright infringement of photographs known as the 'Monkey Selfies,'” according to the article.

The ruling emphasized that while Congress authorized “next friend” lawsuits on behalf of habeas petitioners and for children or incompetent persons, the legislative body did not extend that right to animals, says the Post.

"Our precedent on statutory interpretation should apply to court rules as well as statutes: if animals are to be accorded rights to sue, the provisions involved therefore should state such rights expressly," the 9th Circuit Court found.

An animal "could have legal rights in other areas" but not have copyright ownership, Northcote says. "Copyright is entirely the creation of a statute."

One element of copyright is the ability of the owner to commercially exploit it, and if the monkey were, for example, the owner of the photograph, he wonders how the animal would make money from the image.

"Copyright law is quite similar in many countries," Northcote says. "In fact, there's an international treaty that recognizes that if you're a copyright owner in Canada, then you are recognized in other countries. The broad outline is similar around the world."

Northcote offers advice to anyone who may find themselves in a similar situation.

"I would advise them to do some post-capture editing — crop it, manipulate the colour, lighten or darken certain areas of the photo," he says. "I would try to rely on that as creating some copyright in what's called derivative work."

He says he would then carefully control the distribution of the work.

"I would have a licence agreement that would limit users in what they could do with it. I would say don't post it on places like Wiki, where it could be reproduced widely,” Northcote advises.

"There are technology controls like putting a digital watermark on it so you can track where it's being used," he says.

Northcote suspects the issue will return, as animal law is a growing field.

"It is a fascinating area," he says.

A large chain of taco restaurants will have a tough time trying to keep others from using “Taco Tuesday,” Toronto business lawyer Bill Northcote tells Metro News.

Claiming it has a trademark on the phrase, the fast-food giant recently told a Calgary taco restaurant to stop using it to advertise its weekly half-priced specials, says the publication.

Northcote, chair of Shibley Righton LLP’s business law group, says the fast-food giant doesn't actually have a registered trademark on “Taco Tuesday” — just the Tuesday part.

“The word taco was disclaimed because it is descriptive of the services (selling tacos),” he says.

According to the report, the chain trademarked “Taco Tuesday” in 1997. The company sent a cease-and-desist letter to the Calgary restaurant last Friday, demanding they stop using the slogan. The company plans to comply, says the report.

Northcote and other trademark lawyers say there’s a good chance the chain wouldn’t win if a legal challenge were to be launched.

While the moniker may have been trademarked in 1997, several lawyers tell Metro News that it has become “genericized” over the years through widespread use. In order to be enforced, they say, a trademark has to be distinctive.

The Federal Court of Appeal (FCA) “got it right” in resolving the issue of trademark confusion in a case involving a Canadian luggage company and a Swiss firm, Toronto business lawyer Bill Northcote tells The Lawyer’s Daily.

As the article notes, the FCA ruled that several of the Canadian company’s logos would be “likely to cause confusion” with the trademark of the Swiss company, which specializes in goods marked with a symbol resembling the cross on the Swiss flag.

“To me, there is a likelihood of confusion to the casual observer, which is, of course, the test,” says Northcote, chair of Shibley Righton LLP’s business law group.

“I can understand why [the Swiss company] pursued this, because [the Canadian company] was infringing on their mark and attempting to appropriate part of the goodwill associated with it.”

In an earlier decision, a Federal Court trial judge ruled there was a lack of resemblance between the marks that was not likely to confuse consumers and thus no “passing off” of the Canadian company’s bags as the Swiss company’s product.

As The Lawyer’s Daily reports, the decision was appealed, with the Swiss company arguing that the judge erred in concluding there was no likelihood of confusion and no passing off. The FCA agreed unanimously, saying the Canadian company’s marks would likely cause confusion with the Swiss product in the “mind of a casual consumer in somewhat of a hurry … [and] does not pause to give the matter any detailed consideration or scrutiny.”

"Under s. 6(2) of the Trade-marks Act, the use of one trademark causes confusion with another if the use of both trademarks in the same area would be likely to lead to the inference that the goods have the same source," says The Lawyer’s Daily. Subsection 6(5) of the Act says a court should give regard to “all the surrounding circumstances” of the marks, including factors such as their distinctiveness and length of time in use.

The FCA judge wrote that she agreed with the appellants that the lower court made a reviewable error when it discussed only the resemblance factor between the marks, rather than looking at all the circumstances as provided for under s. 6(5) of the Act, says the article.

A Federal Court decision that backs a copyright collective in its battle to collect royalties from an Ontario university cannot be ignored by Canadian post-secondary institutions, says Toronto intellectual property lawyer Bill Northcote.

“It demonstrates that copyright holders of, presumably, mostly academic works are getting more aggressive in terms of enforcing their rights and getting proper compensation,” says Northcote, a partner with Shibley Righton LLP.

Justice Michael Phelan ruled in favour of a collective that administers reproduction rights for Canadian literary works and ordered the university to pay damages for the millions of pages of materials that the university's staff copied for coursework.

The university argued that its copying of book excerpts, articles, videos and other materials fell within the “fair dealing” exceptions allowed for educational users under s. 29 of the Copyright Act, and that it had developed its own “Fair Dealing Guidelines.”

But Phelan found that the university’s use of the material did not fall under the law’s fair dealing exceptions. Its own “Fair Dealing Guidelines” are “not fair in either their terms or their application,” he wrote. The university made “no real effort” to review or enforce its guidelines, he added.

Northcote says the judgment is noteworthy for its detailed analysis of the law’s fair dealing exceptions.

The court went to considerable lengths to distinguish between single-use copying and the more widespread dissemination of materials typical of university coursework, Northcote tells AdvocateDaily.com.

The judge wrote that the university’s wide-ranging, large-volume copying tended toward unfairness. For instance, the university’s “fair dealing” guidelines allowed the copying of 100 per cent of a single work, he said.

Professors and staff typically bound together photocopies of the material in student course packs, while digital reproductions were made available on in-house, password-protected software platforms.

“There’s a substantial amount of money involved here, particularly for what is ultimately distributed to writers,” Northcote says.

An expert called by the copyright collective testified that if all Canadian post-secondary institutions outside Quebec adopted the defendant’s guidelines, it would result in the annual loss of licensing royalties of between $10 million and $14.7 million, with the university’s share being $800,000 to $1.3 million.

The judge accepted evidence about the numerous challenges facing the Canadian post-secondary educational publishing industry as it struggles to adapt to the digital age.

Northcote says the judge went through the case law exhaustively and his decision is carefully written — likely in anticipation of an appeal.

The university has announced it will appeal, calling Phelan’s ruling “the first phase” of the litigation, according to a release from the university’s media relations director.

The court’s decision will likely have an impact on the next round of tariff hearings at the Copyright Board when discussions turn to questions of what is fair dealing and what usage should attract a licensing fee, Northcote says.

This case illustrates how rapid technological change is challenging copyright protections, he adds. “It’s a demonstration of the fact that intellectual property law, particularly copyright law, tends to lag behind technological development in the real world. It’s an ongoing problem.”

The decision puts at risk any university not adhering to the tariff set by the Copyright Board, he says. “It may well have been a bit of a test case for [the copyright collective].”

Northcote predicts more court battles of this nature, particularly as digital and online uses develop.

“It’s a very interesting, developing area of the law. Thirty years ago, intellectual property was not a big area of the law. It was kind of its own special area that the rest of the legal community didn’t pay much attention to,” he says.

“Now that’s completely reversed. Everything a lawyer does in the business field now has some sort of intellectual property aspect to it.”

The fight over the ownership of a monkey selfie could soon be resolved as the parties pursue an out-of-court settlement, says Toronto business lawyer Bill Northcote.

“That could leave some of the legal issues unresolved, but to most copyright lawyers, even without litigation, this was a settled point,” says Northcote, chair of Shibley Righton LLP’s business law group.

“The trial court already decided that copyright cannot be owned by an animal,” he tells AdvocateDaily.com. “That decision will be persuasive, although not binding, on another trial court hearing.”

But if the appeal court had heard the case to completion, the decision would be binding on other American trial courts and would be persuasive in some other jurisdictions. Northcote suspects PETA (People for the Ethical Treatment of Animals) was afraid it wouldn’t win.

“Presumably that’s the reason PETA wants to settle because they figure they don’t have any chance of being successful. So better to fight another day,” he says.

The parties recently asked the judge to hold off deciding the case while they pursue settlement discussions.

“Given the current progress of settlement discussions, the parties are optimistic that they will be able to reach an agreement that will resolve all claims in this matter,” the parties said in a joint motion to stay the appeal, according to the World Intellectual Property Review (WIPR).

Under all the monkey business and the clever headline possibilities like “Monkey see, monkey sue,” is a real legal conundrum.

The case centres around a “selfie” taken in 2011 by a Macaque monkey in Indonesia using the camera of British photographer David Slater.

According to an article in The Telegraph, Slater was taking pictures of a group of monkeys when one of them grabbed his camera and snapped off hundreds of pictures. While most were out of focus, the animal did manage to capture some incredible images in the process, one of which is the infamous monkey's self-portrait.

The photo then went viral, and when Slater saw the picture on Wikipedia in its royalty-free database, he asked the website to stop using it without his permission.

Wikipedia refused, stating that the picture cannot be copyrighted as Slater did not take the picture.

This led to a copyright infringement lawsuit in September 2015 by PETA, which claimed proceeds from the photo should be given to preserve the monkey’s habitat.

In response, reported WIPR, Slater filed a motion to dismiss the case, arguing that American law did not give animals the right to assert copyright ownership.

At trial, a California judge rejected PETA’s claim and stated that any copyright ownership by animals is a matter for Congress, not the courts. PETA appealed and the court recently heard arguments from both sides.

PETA’s attorneys argued the copyright ownership should belong to the monkey, not Slater, while the photographer’s defence asked if PETA has a close enough relationship to the monkey named Naruto to represent it in court, WIPR reports.

“From a lawyer’s perspective,” says Northcote, “the initial case was interesting because it reinforced the concept that there could be works which have no author for copyright purposes.”

It was “helpful to have the case, but the results weren’t surprising,” he says, adding it’s unlikely the courts would ever extend copyright ownership to animals.

“It would lead to all kinds of bizarre results. For example, if the monkey did own the copyright, how does it administer it? Implicit in copyright ownership is the right to license others to use it. Well, how can a monkey agree to that?” Northcote wonders.

“And if you extend it, which is what lawyers like to do, suppose you’re in a forest and a bird sings and you record it. The act of recording it doesn’t create the copyright because there’s no creative effort expended in the creation of it. So, does that mean the bird can copyright its song? And does that mean that other birds have the right to sue?”

Northcote says settling the case is an appropriate resolution on two fronts.

“First, why would PETA have the right to represent this monkey? And second, an animal cannot assert copyright ownership,” he says.

Mutually beneficial relationships help the legal system work smoothly so lawyers should be patient and candid with upset clients, says Toronto civil and commercial litigator Jonathan Miller.

He says many people have little or no experience with the complex legal system and their point of reference could be based on inaccurate legal television shows that give them unrealistic expectations.

While research has debunked much of the so-called CSI effect — the way exaggerated crime dramas bias jurors — studies suggest they can still influence the public, says Miller, an associate with the Toronto office of Shibley Righton LLP.

"Some people seem to think we can do anything and everything without ever writing a document — or that trials start within a week or two of a first court appearance. It’s not how it’s portrayed on TV, but I think that impacts people’s expectations of their lawyer,” he says.

Best practices in the legal profession come from a wide field with every law society and bar association offering guidelines for management and practice, but a strong thread that runs through it all is the basic idea of building and maintaining relationships, Miller says.

"Most lawyers are aware of it, but it’s never bad to have a reminder that clients may come in and be angry or have other negative emotions," he says. "It's important to remember that you want to maintain that client relationship."

Miller tells AdvocateDaily.com that lawyers are expected to be candid, which sometimes means providing clients with information they don't want to hear.

"But there are certain ways legal counsel can present it so they’re not creating animosity. They should be fostering a relationship of trust because the client has the expectation that they can have faith in their lawyer,” he says.

Miller recalls a situation where a client suggested he wasn't working in her best interests.

"I took my time, wrote a fairly lengthy email that acknowledged the client’s frustration and advised what was being done and why it was taking longer than the client would have liked.

"She was frustrated with the process and that was being directed at me, properly or not, so it’s important to understand where the client is coming from,” he says.

When emotions run high the focus shouldn’t be difficult clients, but rather on people dealing with challenging circumstances, Miller explains.

"They sometimes just don’t know where to direct it," he says.

Miller suggests a lawyer address the concerns, real or imagined, but in a calm manner because knee-jerk reactions could lead to regret.

"It’s important to not respond in anger so you can provide a cogent response such as, 'This isn’t what you want to hear, but this is what I need to tell you,'" he says.

Things worked out with the distraught client, but Miller says they could have gone south quickly had he reacted without thinking.

"Having said that, I think it’s also important to not let clients walk all over you," he says. "At some point, you may need to take a stand and say, 'If you think I’m doing this improperly, maybe you would be better off with another advocate.'

"Certainly a lawyer is entitled to protect himself, but just be careful and respectful about how it's done," Miller says.

A Toronto litigation and corporate law boutique has sued a former partner in the firm for $9 million after a dispute over a contingency fee client.

BTZ alleges Nguyen breached his contract and fiduciary duty to the firm when he “improperly solicited” some of its clients to come with him when he resigned in early 2015, including Indcondo Building Corporation, a property development company with a $20-million claim against its one-time business partner.

But in a statement of defence and counterclaim also filed with the court, Nguyen denies the claims and demands $1.1 million from BTZ, alleging the firm still owes him for work he did on the Indcondo file, as well as a 25-per-cent cut of any fees the firm collects on the matter.

None of the allegations in either document have been proven in court.

Nguyen tells Law Times that “my lawyer has advised me not to comment while the litigation is pending;” a sentiment echoed by BTZ’s co-managing partner Peter Brauti.

“As this matter is currently before the courts, it is our practice not to comment on the litigation,” he said in a statement.  

Indcondo retained Nguyen on a contingency fee basis in 2007 while he was still a Toronto-based sole practitioner to help it collect on an $8-million judgment it had achieved following a shareholder dispute with former business partner David Robin Sloan. Although the judgment was delivered back in 2001, Indcondo had run into trouble enforcing it thanks to Sloan’s bankruptcy and subsequent discharge. But with interest accumulating at a rate of 15 per cent per year, by 2015, the value of the judgment had ballooned to more than $20 million.

This article appeared on LawTimesNews.com.  To read the complete story please click here.

In certain matters, clients may benefit from a co-counsel setting where lawyers tackle different aspects of the case — but the success of these arrangements depends on mutual respect and compromise, Toronto lawyers Armand Conant, Bill Northcote and Joel Berkovitz tell Lawyers Weekly.

As an example, Conant, partner and head of the condominium law group at Shibley Righton LLP, points to a complicated condominium matter where it was clear that drawing in a small team of colleagues in a co-counsel setting to tackle different aspects of the job would be beneficial to the client.

“We needed their skill sets,” Conant says of the decision to bring in Northcote, chair of Shibley Righton’s business law practice group, and Berkovitz, an associate with the firm 

who practises business and condominium law.

“Bill and I would go to the strategy meetings with Joel and talk about how it would all work,” explains Conant. “Joel would then work on multiple agreements, drafting and redrafting them, and then we would review them.”

Northcote says the advantages to co-counsel arrangements extend beyond the sharing of work.

“Sometimes you involve other counsel because you want somebody who brings a fresh perspective,” he says, explaining the value of multiple fields of expertise.

Berkovitz agrees: “We see this a lot, particularly when it comes to corporate counsel and tax issues, where we defer to the advice of our tax specialists just because it’s an area they have so much experience in.”

At the same time, Conant, Northcote and Berkovitz say while co-counsel arrangements can prove beneficial, they require maintenance and consideration.

The three lawyers note they have never experienced serious conflict while working with each other.

“Armand and I haven’t had any conflict because you have to bring a spirit of respect and compromise,” says Northcote.

“But Joel may have experienced conflict thinking who are these guys and why am I working late when they’re sitting at home. But that’s partly a question of what roles people fulfil.”

Berkovitz notes that the stability of the co-counsel relationship indeed depends on each party recognizing their role and their place.

“As a junior you’re expected to be adaptable to your seniors rather than your seniors are expected to adaptable to you,” he explains.

“It’s a matter of you learning their working style, what they’re looking for and how they want to work with you. Do they want you to come back with questions all the time or do they want you to try to find a solution and only come back if necessary? Once you have that all down, then the working relationship is generally pretty smooth.”

Conant adds that senior co-counsel also need to respect junior team members.

“Joel might raise something he saw in another deal, where somebody did a slight twist on a transaction, and it might help on this point too. This kind of interaction, think-tanking and brainstorming is excellent.”

Co-counsel arrangements are common in many areas of practice, from criminal trials and litigation, where there’s significant court work, to complicated paper-laden negotiations.

But can too many hands on deck sink the ship? Insiders who have worked collaboratively with other lawyers recommend respecting boundaries, working as a team and striving for harmony all while focusing on the needs of the client.

Armand Conant, a partner at Shibley Righton in Toronto, recalls a complicated condominium matter where it was clear that client interest would benefit from drawing in a small team of colleagues in a co-counsel setting to tackle different aspects of the job

This article appeared on LawyersWeekly.ca.  Please click here for the full story.

As it can be daunting to take on the role of repairing a dysfunctional executive team, a new CEO should start by ensuring that those in the C-suite have clear roles and responsibilities, Toronto business lawyer Bill Northcote tells Succession Planning, a special supplement published by The Bottom Line and Lawyers Weekly.

“A lack of clarity can lead to conflict and competition. Infighting and politicking are signs of dysfunction,” says Northcote, chair of Shibley Righton LLP’s business law practice group.

“There will always be some competition,” he says, “but the role of the CEO is to get strong people to perform and co-operate" and to identify stakeholder groups and their interests to get a full understanding of how the organization works.

However, he adds, incoming CEOs may be faced with a lack of candour when interviewing employees early on.

“They won’t necessarily tell you what the problem is,” he says in the article.

Initially, the new leader needs to recognize what matters most to the business.

“Decide which functions are critical to the organization and which are less so,” explains Northcote. “Depending on the company, sales might be most important, for example, or IT. The CEO needs to recognize which areas are the priorities and focus efforts on making sure they function well.”

In general, Northcote says, the CEO must also lead by example.

“You should model the behaviour that you expect of others,” to reinforce the priorities and values you want the organization to embrace.

As law firms grow to meet client needs, they often consider joining a firm network or expanding internationally, but Toronto business lawyer Bill Northcote poses an interesting question in Lawyers Weekly: are networks and global firms competitors, or do they serve separate markets and clientele?

As Northcote, chair of Shibley Righton LLP’s business law practice group says in the article, the 18 largest law firm networks each include more than 7,000 lawyers and have members practising in 80 to 100 separate jurisdictions. The largest law firm is Dentons, which reportedly has some 7,000 lawyers in 52 jurisdictions.

While the two concepts often compete for the same business, Northcote says, there are distinct differences.

“Law firm networks are generally non-exclusive, informal, relatively inexpensive to participate in and have a modest number of staff and overhead. Within these networks there is considerable diversity in size, geographic scope, membership fees and non-legal resources available to members,” writes Northcote.

In contrast, he explains, “large international law firms are exclusive and have significant overhead but can deliver a worldwide brand and a more closely integrated billing process.”

For small and medium-sized enterprises in particular, law firm networks have more affordable legal fees and generally provide easier access to senior lawyers, writes Northcote, while international law firms have the advantage of larger marketing budgets to pitch the largest of cross-border transactions.

Recently, however, Dentons announced the formation of a new form of network — the Nextlaw Global Referral Network — without membership fees or territorial exclusivity.

“Its stated goal is to recruit, vet and admit a large number of law firms as members in the next few months, clearly a very ambitious and costly goal, particularly when no application or membership fee is charged. The attraction to applicants is obvious — the possibility of referrals with no cost,” says Northcote.

This is essentially an acknowledgement that multijurisdictional growth within a single law firm structure can be difficult and not sustainable. For example, the conflicts of interest that arise in a single large law firm are frequently insurmountable, says Northcote.

For law firm networks, a recent trend has been focusing on internal quality assurance programs, in part as a response to the brand equity enjoyed by large multijurisdictional law firms, says the article.

“In essence, law firm networks can flourish by providing international legal services in a cost-efficient manner to small and medium sized enterprises through reduced overhead and simpler structures, while international law firms can provide a more integrated offering (including invoices covering multiple jurisdictions) but at a greater cost due to higher hourly rates and more overhead which is less significant in only the largest international transactions and ‘bet the company’ international litigation,” says Northcote.

Between these two extremes, he explains, these two concepts compete.

Since the first law firm network was created in 1989, over 150 law firm networks have been formed and are in active operation.

Some large law firms have become “national” and “international’ by opening branches in other domestic and foreign jurisdictions and practising not just the law of their “home” jurisdiction but local law as well.

As law firms strive to fulfil client needs and compete they need to consider whether to become international or to become a member in a network. Are the networks and the international law firms competitors of each other or do they serve separate, distinct markets and clientele?

The 18 largest law firm networks generally each comprise more than 7,000 lawyers and have members practising in on average about 80 to 100 separate jurisdictions. In contrast, the largest law firm (by number of lawyers) is Dentons, which reportedly has about 7,000 lawyers in 52 jurisdictions.

Adam Cooke, the executive director of Multilaw, one of the largest networks, points out:

“Generally large international law firms seem to have extreme difficulty in expanding beyond about 50 jurisdictions. Law firm networks don’t have that problem because they are more nimble and can recognize that some jurisdictions, particularly newly industrializing countries, are importers of legal works while some, particularly the United States and the EU, are exporters of legal requirements. In a network both functions are highly valued.”

The rise of formal law firm networks mirrored the growth of international trade (and the resulting increase in international litigation) which first occurred in large business entities but which increasingly is an integral part of the businesses of small and medium sized enterprises.

These same forces have driven the diversification of large international law firms as they opened offices in new jurisdictions to meet client requirements.

Of course the two are quite different. Law firm networks are generally non-exclusive, informal, relatively inexpensive to participate in and have a modest number of staff and overhead. Within these networks there is considerable diversity in size, geographic scope, membership fees and non-legal resources available to members.

In contrast, large international law firms are exclusive and have significant overhead but can deliver a worldwide brand and a more closely integrated billing process. For many clients, particularly small and medium sized enterprises, law firm networks have more affordable legal fees and generally more ready access to senior lawyers. International law firms have the advantage of larger marketing budgets used to build brand awareness and pitch the largest of cross-border transactions.

While it is tempting to say that small and medium size enterprises gravitate to networks while large multinational corporations are serviced by international law firms, it is not so simple. Often the two compete for the same business.

Indeed, Dentons seems to have recognized the shortcomings of its business model when it announced in May the formation of Nextlaw Global Referral Network that it touts as a new form of network, one without membership fees or territorial exclusivity. Its stated goal is to recruit, vet and admit a large number of law firms as members in the next few months, clearly a very ambitious and costly goal, particularly when no application or membership fee is charged. The attraction to applicants is obvious — the possibility of referrals with no cost. Hope Krebs, Multilaw’s chair, believes that: “…this is a way for Dentons to expand its relationships with law firms in other jurisdictions. It is implicitly an acknowledgement that their growth within a single law firm structure can be difficult and not sustainable. For example the conflicts of interest that arise in a single large law firm are frequently insurmountable.”

Michael Siebold, the chair of Interlaw, another large law firm network, disputes Dentons’ focus on the negative effects of territorial exclusivity: “Our member firms are sometimes part of other referral networks — my own firm being a case in point — firstly because they are completely independent, and secondly because Interlaw is so much more than a referral network… Finally, paying membership dues covering the cost of a very lean management appears to be normal procedure, and even fully integrated international firms need to make contributions for marketing, business development, etc., and I believe Dentons follows the same model.”

The most recent trend in law firm networks is a focus on internal quality assurance programs, in part, in response to the brand equity enjoyed by the large multijurisdictional law firms.

In essence, law firm networks can flourish by providing international legal services in a cost-efficient manner to small and medium sized enterprises through reduced overhead and simpler structures, while international law firms can provide a more integrated offering (including invoices covering multiple jurisdictions) but at a greater cost due to higher hourly rates and more overhead which is less significant in only the largest international transactions and “bet the company” international litigation. Between these two extremes the two compete.

This article origionally appeared in the July 15, 2016 issue of The Lawyers Weekly published by LexisNexis CVanada Inc.

Even covers can be infringement, lawyer says, let alone staging three numbers from a smash-hit Broadway musical like a Scarborough, Ontario high school did. 

Lawyer Bill Northcote has a message for the high school students and teachers in Scarborough, Ont. who staged three numbers from the hit Broadway musical Hamilton, only to have them removed from YouTube:

Be willing to wait for it.

The musical — a hip-hop retelling of the life of American founding father Alexander Hamilton — is not yet licensed for amateurs.  

Reproducing it is infringement under the Copyright Act, said Northcote, chair of business law at Shibley Righton LLP in Toronto, and it doesn’t matter that the play is American. The rules are essentially the same.

The singing, rapping and dancing chops of students from Wexford Collegiate School for the Arts earned accolades from around the Internet before the videos were taken down at the request of Hamilton’s PR rep Thursday.

Although a takedown request or cease-and-desist letter usually does the trick in cases like this, the copyright owners could be within their rights to get a court order preventing the school from performing Hamilton any more and could seek damages (monetary compensation) for its unauthorized use, Northcote said.

That is, unless the Wexford kids could successfully argue they qualify for an exception.

One way would be through fair dealing: Copyrighted works may be used for research, private study, education, parody or satire.

Just how much copying is fair is defined case-by-case. Even a cover of a single song can be infringement, and “reproduction of the whole work is certainly not fair,” in the case of a musical, Northcote said.

There’s also a special exception for performances at schools.

But the show has to be primarily by students, for an audience of mainly students and teachers, on school property and not put on for profit. That’s why lip-syncing to the Spice Girls at your school talent show is OK.

But Wexford students performed for the media and posted recordings to YouTube.

The more people see a grifted work, the higher the damages could be, Northcote explained.

Wexford's rendition of the song Right Hand Man had 21,000 views.

This was students' and teachers' “love letter” to Hamilton, the school’s artistic director Ann Merriam told Torstar News Service. They wanted to catch the attention of its cast and creators.

But they hoped it would be in a positive way.

That’s not the same as waiving intellectual property rights, Northcote explained, but could encourage “a false sense of comfort that he won’t mind.”  

It’s reasonable to hold off on allowing amateur productions, Northcote added, especially while Hamilton is still booming on Broadway. It’s part of the creators’ rights to cash in on the time and effort they put into making it.

U.S. and international tours of Hamilton are planned into 2018 and beyond. So it will likely be years before it’s heard at high schools. Current secondary students — young, scrappy, hungry and Hamilton-crazy as they are — may not get their shot at it.

This story appeard on metronews.ca

For those building a successful business, it can be hard to also maintain good family relationships — the key is to draw a distinct line between the two, Toronto business lawyer Bill Northcote tells Succession Planning, a special supplement published by The Bottom Line and Lawyers Weekly.

“Every family dynamic is different and every family business is different, so there are many possible causes of friction. The trick is to try to divorce the family dynamic from the business dynamic, and some families are better at this than others,” explains Northcote, chair of Shibley Righton LLP’s business law practice group.

Having formal agreements among family members, says Northcote, is beneficial in that the process of developing them helps everyone address issues and avoid potential misunderstandings, such as what the parents have promised their children.

Family firms that survive past the first generation also need to be aware of the differences between generations, Northcote says in the article.

“The dynamic changes when the patriarch or matriarch dies,” he explains.

“In the second generation, spouses and in-laws have a greater impact. And if the founder has remarried, there will be further complications between the second spouse and the stepchildren.”

Ultimately, if Canadian family firms paid more attention to succession planning, they would improve their changes of long-term survival, Northcote says.

He explains that European family businesses seem to last longer than North American firms. Although the reasons are hard to pin down, Northcote says he suspects tradition plays a role.

News that Canadian residents will no longer be able to apply to appear on Jeopardy! due to international privacy law concerns is likely just a way for the popular TV quiz show to avoid the burden of investigating and complying with Canadian law, Toronto business and entertainment lawyer Bill Northcote tells AdvocateDaily.com.

Global News reports the quiz show hosted by Canuck Alex Trebek has long accepted Canadian contestants but as of this year, Canadians are shut out from applying for the time being. In a statement, the show’s producers stated:

“As international laws governing how information is shared over the internet are ever-changing and complex, we are currently investigating how we can accept registrations from potential Canadian contestants.”

This vague reasoning is probably because the show doesn’t want to go to the effort of finding out what it needs to do to comply with Canadian law, says Northcote, partner with Shibley Righton LLP.

“It’s probably easier to just exclude Canadians,” he says. “I took a look at a couple of websites for other game shows, like Wheel of Fortune, and most state that you have to be a United States resident to apply. Jeopardy! has long accepted Canadians and was one of the rare shows to do so.”

Trebek, in a statement to the Ottawa Citizen, pointed at Canadian privacy laws as the culprit behind the ban.

“We have had many Canadians as contestants throughout the history of the show, and we hope that will continue, because Canadians make great game show contestants. We look forward to having more try out as soon as we are sure we can comply with all Canadian online privacy laws,” Trebek says.

Northcote says the reasoning given by the show to exclude Canadian residents doesn’t point to any specific legal provision. He says if it’s due to Canada's Anti-Spam Legislation, they could draw up the right forms of consent.

“You can consent to getting email and you could consent to the use of your name and likeness and all of that. I haven’t seen it but I'm sure there's a very lengthy release form that allows the show to put you on TV if you get to that stage.”

“At the end of the day, it is probably too much work for them. Frankly, the show’s major market is the United States so I suspect there's really not much interest or need in having Canadians participating. I don’t think this change will affect one iota of how many people tune in and how much advertising revenues are generated," Northcote says.

"I know some Canadians feel strongly about it, and I suppose they could all boycott Jeopardy!, but it's not likely to happen,” he adds.

A recent decision that ruled a reader had violated new provisions of the Copyright Act when he bypassed a publication’s paywall to access an article raises questions about technological neutrality, as similar facts in the analog world would yield a different result, Toronto business lawyer Bill Northcote tells Law Times.

As the article reports, 13595804 Ontario Limited (Blacklock’s Reporter) v. Canadian Vintners Association (CVA) centred around a subscription-only news publication focused on the workings of Parliament, which quoted the president and CEO of the CVA. Although the CEO was concerned about “inaccuracies” in the preview, he was unable to see the full story behind the paywall, and asked a subscriber friend to send him a copy.

When he contacted the publisher to discuss the story and disclosed how he managed to view the article, he soon received a letter alleging a breach of copyright, as well as an invoice for two subscriptions. After refusing to pay, Blacklock’s took the case to Ottawa Small Claims Court, winning $11,500 plus $2,000 in punitive damages, says the article.

Deputy Judge Lyon Gilbert ruled that the fair dealing exception to copyright infringement was not available to the winemakers’ group “because it had violated the new technological protection measure provisions of the Copyright Act when bypassing the online publication’s subscriber paywall to access a news article,” Law Times reports.

As Northcote, chair of Shibley Righton LLP’s business law practice group, says: “If I buy a newspaper, and you ask to see an article about you in it, there is no copyright infringement there in the traditional analysis.”

Northcote also tells Law Times that he was troubled by the suggestion in the judgment that something must come of research or private study in order for that fair dealing purpose to be considered genuine.

“There are all kinds of good tactical reasons why you may decide to do nothing with your research, rather than getting into an argument with a publisher,” he says.

Northcote says the CEO’s call to Blacklock’s publisher to discuss the story could be regarded as the sort of action the judge found lacking, adding that the punitive damages award “seems excessive.”

SAN FRANCISCO — A federal appeals court Monday cleared the way for a trial in a copyright lawsuit over a YouTube video showing a baby dancing to the Prince song "Let's Go Crazy.''

The lawsuit was filed by the baby's mother, Stephanie Lenz, after Universal Music sent a notice to YouTube demanding the video be taken down for violating the song's copyright.

The 9th U.S. Circuit Court of Appeals said copyright holders can't demand videos and other content that uses their material be taken down without determining whether they constitute "fair use.''

Fair use allows segments of copyrighted works to be used for purposes of criticism, comment, research or in other limited circumstances without a license from the copyright holder.

Lenz said the video is fair use, and Universal had failed to consider that before ordering the video taken down.

Universal said it considered fair use and still determined the use of Prince's song in the video was unauthorized.

The 9th Circuit said a jury would have to decide whether Universal had done enough to form a good faith belief that the video violated fair use. The court agreed with a lower court that rejected Universal's and Lenz's motions to grant pre-trial judgments in their favour.

The Electronic Frontier Foundation (EFF) represented Lenz and said Monday's ruling had ramifications beyond her case.

"Today's ruling sends a strong message that copyright law does not authorize thoughtless censorship of lawful speech,'' EFF Legal Director Corynne McSherry said in a statement.

Toronto intellectual property and entertainment lawyer Bill Northcote tells AdvocateDaily.com this case is not surprising given U.S. law, and adds that the Canadian Copyright Act includes parody and satire within the definition of fair use.

Northcote, partner with Shibley Righton LLP, tells the online legal publication this case would play out differently in Canada.

“In Canada, we have an exception to copyright infringement where an individual uses an existing work (in this case the song ‘Let’s go Crazy’), which has been made available to the public if: (a) the use of the new work is solely for non-commercial purposes; (b) the source of the original work is mentioned if reasonable in the circumstances; (c) the individual had reasonable grounds to believe that the existing work was not infringing copyright; and (d) the use of the new work does not have a substantial adverse effect, financial or otherwise on the exploitation of the existing work (i.e. the song).”

He notes the EFF’s interpretation is a reflection of the U.S. approach to free speech that is typically not a significant legal issue in Canada.

Universal Music did not immediately have any comment.

Transitioning out of professional practice through a two-step arrangement can help ensure a level of continuity, but there is no guarantee clients will want to move over to the incoming firm, says Toronto business lawyer Bill Northcote.

“Ultimately the clients have got complete autonomy. If the client says ‘you’re moving to X law firm, but I don’t want to go there,’ there’s nothing you can do about that,” Northcote, chair of Shibley Righton LLP’s business law practice group, says in Succession Planning, a special supplement published by The Bottom Line and Lawyers Weekly.

As the article explains, succession planning via a two-stage deal with a compatible incoming firm usually allows the selling lawyer to practice with the new firm for a defined period of time, before the final buyout occurs in the second phase.

During the first stage, parties will reach an agreement about how long the seller will work within the acquiring firm, and how they will be compensated.

For lawyers, explains Northcote, such compensation is normally based on a percentage of the billing from their work with their own clients, plus a percentage of the billings that others in the acquiring firm collect from working with the same clients.

“The deals that we’ve seen compensate the incoming practitioner [with] an amount in the range of 10 to 15 per cent of the fees billed and collected,” Northcote says in the article, adding that the selling owner will often continue to get a fee for two or three years after retirement.

Arrangements that do not work out can typically be terminated upon notice of about three months, says Northcote.

“Usually, it’s mutual. If either side’s not happy, then it’s not a healthy relationship, and it’s better for people to move on,” he says in the article.

The provincial government should be going further than simply trying to keep pace with corporate legislation in other jurisdictions, Toronto business lawyer Bill Northcote tells Law Times.

Northcote makes his comments in an article about the recently released report, "Business Law Agenda: Priority Findings & Recommendations Report."

As the article notes, the government announced via a report in the 2015-16 provincial budget that it will be looking at Ontario’s business law statutes, noting that “a comprehensive review of business legislation to ensure that Ontario is competitive hasn’t been done for some time.”

Northcote, chair of Shibley Righton LLP’s business law practice group, tells the legal publication that the province is lagging behind other jurisdictions.

“Ontario is in a catch-up stage of its legislation rather than leading change,” he says in the article. “I would have liked to have seen the government be a little bit more innovative than they are."

For example, Northcote tells Law Times that British Columbia and many U.S. states now allow benefit corporations intended to achieve a public purpose, such as alleviating poverty or protecting the environment. Clothing manufacturer Patagonia Inc. is one such corporation, he says, but Ontario legislation doesn’t include them.

The Ministry of Government and Consumer Services will be accepting feedback on the report until Oct. 16.