What are the highly damaging internet legal liabilities and risks to you -- chat with Martin Kratz QC, head intellectual property practice group, Bennett Jones LLP, legendary IP and ICT legal authority and pioneer
My chat with Martin was a real eye opener – there is a tremendous amount of legal risk to you when using the Internet and ignorance does not protect you!
Martin Kratz leads the intellectual property practice and co-leads the ecommerce practice for Bennett Jones. His practice is focused around intellectual property and technology law, which includes substantive patent, copyright and trademark matters as well as matters of intellectual property transactions, IP commercialization, IP strategy and opinions, data protection, privacy, ecommerce, strategic alliances, mergers, acquisitions and technology transfers among technology companies. His practice is focused on the energy, electronic commerce, cloud computing, software, telecommunications, pharmaceutical, biotechnology, entertainment and related industries.
Martin continues to be internationally recognized as a leading lawyer. Among other recognitions he is identified:
- as one of Canada's most creative lawyers by Lexpert-Thomson in the US guide to Canada's 100 Most Creative Lawyers;
- as one of Canada's leading lawyers in The Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada in intellectual property, and formerly when the categories were covered also in information technology and biotechnology law;
- as a leading Internet and e-commerce lawyer in Who's Who Legal: Internet & e-Commerce;
- as one of Canada's leading lawyers in Woodward White's The Best Lawyers in Canada for intellectual property law, technology law and information technology law;
- in Who's Who Legal 2013 in Information Technology, Patents and Sports & Entertainment;
- as highly recommended in technology law by the Practicing Law Institute;
- as recommended by Chambers and Partners for information technology law and intellectual property law;
- in The International Who's Who of Internet & e-Commerce Lawyers by Who's Who Legal;
- as a pre-eminent lawyer in information technology transactions in Euromoney's Guide to the World's Leading Information Technology Lawyers;
- as a leading lawyer in Intellectual Property and Information Technology by Lawday; and
- as a leading Canadian IP practitioner by winning the Corporate Intl Global Award, Intellectual Property Advisory Excellence in Canada.
Martin has written over 285 publications on various topics involving intellectual property, technology law or on related topics including the following books as sole or co-author: Canadian Internet Law, 2013; Canadian Intellectual Property Law, 2nd Ed., 2010; Outsourcing (Canada) 2012; IP&IT Handbook 2011/12: Volume 2: Data Protection – Canada; Licensing 2012 (Canadian Forms & Precedents), Electronic Commerce Law 2012; Trademarks and Industrial Designs, 2002 (Canadian Encyclopedic Digest); Internet Law: A Business and Professional Guide, 1998 (Canada's first Internet law text); Canadian Intellectual Property Law, 1998; Obtaining Patents, 2nd Edition, 1999 (1st Edition published 1995); Protection of Copyright and Industrial Design, 1999, 2nd Edition (1st Edition published 1994); Information Systems Security: A Practitioner's Guide, 1994 (2nd Edition published 2003); The Computer Virus Crisis, 1992, 2nd Edition (1st Edition published 1989 and translated into Russian, Japanese and Dutch versions); and Control and Security of Computer Information Systems, 1988.
Martin is national co-director of Osgoode Hall Law School's Intellectual Property LLM program. Teaching or having taught courses in Intellectual Property Law, Biotechnology Law and Internet Law at several law schools, Martin is an Adjunct Professor of Law at the Osgoode Hall Law School (Toronto) and at Concordia University College (Edmonton). At Osgoode Hall Law School (York University) Martin teaches (as lead national instructor), Intellectual Property Transactions for the Intellectual Property LLM Program. He also acts as Regional Director of the E-Business LLM program. Martin teaches an IT security and law course in the MSc program at Concordia.
Among other memberships, Martin is a member of the American Bar Association's Science & Technology, Patent, Copyright & Trademark, Sports & Entertainment and International Sections, a member of the Intellectual Property Committee of the Canadian Chamber of Commerce, a Fellow of the Intellectual Property Institute of Canada, and a member of the Advocacy Committee of the Canadian Information Processing Society.
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Interview Time Index (MM:SS) and Topic
From your considerable success history, describe some major challenges you have faced and your solutions to the challenges that would be of value to businesses today?
"....Not to fear change in the world but rather to seek to understand what is driving the changes and see how it can be turned into an advantage....Think about your audience what they need and how they need to be informed and to communicate in a way that is meaningful to them....Let the customer know what you are doing for them and why, not merely the result....Seek to find balance as an individual so that you can have endurance for stable and committed long term effort in business...."
With your deep insights as an Information Communication Technology (ICT) and Intellectual Property (IP) legal pioneer, from your viewpoint what are the top five future challenges for business executives today and what are the solutions?
"....Managing the tensions between the efforts of some current industries to seek even higher degrees of protection for ICT innovation, where the trade-off of providing greater protection is that we enrich the current generation at the expense of future generations which are less able to build on what came before....Addressing the issue of internet privacy....The migration of ICT services to the Cloud....Managing the risks of bring your own device policies while still providing flexibilities that employees are seeking....There's a generational challenge looming for executives as younger workers expect to be free to express themselves using social media even in the workplace...."
What are some future disruptive innovations that business executives should be watching for from a legal perspective?
"....Cloud computing involving security and privacy protocols and issues of ease of leaving a Cloud service provider's service are core issues....Security risks and mobile access risks for mobile devices and the challenge of bring your own device policies....Social media having transformative impact in our society....Locational technologies provide unique business promotional opportunities, but if abused can pose security, privacy and personal risk to users and reputational and direct liability for a business....There is growing interest in the use of 3D printers that are claimed to increase the risk of IP infringement....Another innovation risk is the use of IP rights themselves, especially patent rights as a tool to seek to extract value from successful businesses...."
What are the privacy and security compliance obligations users need to consider before they adopt a Cloud-based solution (public sector and private sector)?
"....A key factor in each customer's decision of whether to adopt Cloud-based solutions is understanding if the solution meets the customer's compliance requirements. In Canada, key compliance issues are privacy and security because we have mandatory privacy and security obligations and those are applicable both for the private sector and public sector. I'll differentiate between those two because while there are a lot of similarities, the rules are generally the same...."
What happens if you have a global organization, which for example is based in Canada, but the data resides in the US in the Cloud? Or because it's a global organization, personal records may be held in Asia, Europe, Africa, etc.; what are the implications of that?
"....Generally privacy laws relate to activities not to locations, so the activities of collecting, of using, of storing, of disclosing will trigger the possibility of privacy laws....What global organizations do is that they assess all of the legal regimes that could be applicable to their information handling practices and seek to develop a synthesized set of privacy policies and practices that allow them to be compliant in all jurisdictions, and their privacy policies typically reflect that type of integrated approach...."
Increasingly with the Cloud there are smaller organizations and non-profit organizations, who at a very low cost establish a global footprint. One can see all of the legal implications from that requiring considerable legal advice as to what the implications are. How is that managed if you have all of these smaller organizations including non-profits worldwide who perhaps don't have that ability or resources to do this? Are there any resources available that they can make use of or are lower in cost to help in this endeavour?
"....As a principle point a business has a responsibility to comply with the laws and jurisdictions to which it is subject, regardless of its size or its capability....The tools available for the smaller companies are to consider hiring people who have that kind of global experience as part of the workforce for the smaller company....The second approach they seek to use is in their agreements....The third approach is to look to industry associations or professional associations as sources of information and best practices in terms of compliance...."
You are an active blogger, written articles in this area, and also authored one or more books in this area. Do you have any recommendations as resources?
"....I think a starting point of excellent materials are the websites of the Office of the Information and Privacy Commissioners of the provinces and the federal Privacy Commissioner....If people are interested at a professional or deeper level there are a number of textbooks in this area that will give you a deeper analysis of those privacy obligations and requirements...."
What are some contractual issues in Cloud computing?
"....The starting point is to look at what the cases and the decisions of the Privacy Commissioners have suggested....There should be covenants restricting collection, use and disclosure of the information other than for purposes for which the Cloud service provider is expressly retained....There should be covenants requiring the service provider to maintain specific privacy, safety, security and backup standards for the personal information....There should be obligations to provide access to personal information to the company and its customers or employees as required by their own privacy obligations....Some of these requirements for organizations using foreign service providers include notification of individuals if the service provider outside of Canada will collect personal information on behalf of the organization, and notification if the organization is transferring personal information to a service provider outside of Canada, and information on the outsourcing practices of the organization including its policies...."
Can you share some insights into the investigation and managing domain name disputes?
"....The typical types of domain name disputes we have are trademark infringements where an existing company's trademark is used as a domain name to direct traffic or to try to extort the trademark owner to purchase the domain name. There is also reverse cyber-squatting where a bricks and mortar company has a wish to use a domain name and they haven't been made internet-savvy....Another class of domain name conflicts are commentary sites where disgruntled customers or employees vent about a company's business and an existing domain name is misspelled in an effort for a certain part of the population that mistypes the name will be directed to the other site....There are two approaches legally to address these types of issues...."
What are the key points around the investigation and managing website misuse?
Social media adoption is so widespread around the world today. What are the issues around the investigation and managing social media disputes?
"....Improper social media use can expose a business to a wide range of liability including defamation, harassment, creating a hostile work environment, copyright violation, breach of confidence where a company or third party's secrets are posted, securities law violations have to deal with disgruntled customers or employees, content issues of such things as pornography and hate speech....I think the most important thing that we have as a cultural factor as we adopt social media is we have to start to educate ourselves about smart conduct so we limit our individual exposure to legal liability...."
Social media has an increasing presence in our lives so we have this identity either from a corporate side or as an individual. Do you know of any services that can protect that individual brand, your individuality in some way from all the kinds of misuses that can occur because of the internet?
"....There are a variety of services that purport to do this, but it is not a trivial thing to do....The broad legitimate services look at a wide range of service providers who address questions about identity theft and reputational monitoring and then look at the experience or track record of those kinds of services to see if it's worth adopting or using any of their products...."
How can you validate the reputation of these people providing services? Is there a clearing house or an industry association or some kind of government body that says these people are okay and their services are fine and we can validate them?
"....Efforts to address these issues are efforts to create Trust Marks that identify companies on the internet that have particular adherence to practices (such as the Better Business Bureau), or satisfy certain security or privacy requirements, and while these can be mimicked, the idea is that you can check with the source of the Trust Marks in order to verify that the company in question is actually legitimate....The issue of who you can rely on is an area where there is a real opportunity for industry associations and groups of users in particular areas to establish their own rating services and to use those types of services as sources of information to seek to identify who could be relied on. The difficulty of those kinds of referral services is that they can become 'paid to place services' so despite your reputation you might be able to pay your way into their good graces...."
You are a highly respected legal authority both in the ICT area and also in intellectual property; do you know of any professional legal associations that could provide this kind of additional service, especially connected to intellectual property?
"....There are a variety of those services that seek to identify lawyers who have abilities in certain areas....In terms of identifying websites, what most lawyers tend to do is not look to Wikipedia or other translation sites, but rather look to primary sources. Visit the Canadian Intellectual Property office....All publishers as you know are vulnerable to disintermediation because of the internet, but there's a circumstantial guarantee of trustworthiness that the law book publishers like other publishers provide to their content so they provide to their services in an effort to synthesize the law and make it more readily available to the lay readers as well as to the professional reader...."
ICT Pioneer Kelly Gotlieb has long expressed his views about privacy. What are the current issues from your viewpoint on privacy?
"....In Canada as in other countries we don't permit privacy to become a barrier to the investigation of national security or terrorist threats. The point being in discourse there is an expectation of privacy being an absolute blanket, but privacy is not an absolute right and it is constantly being weighed against other values that are also important to society. The issue is that for most issues, privacy provides a range of tools for individuals to seek to protect their privacy, however the most fundamental has to begin with the individual not to disseminate their personal information widely without care...."
Can you define this area of Creative Commons and then talk about intellectual property issues on the Internet?
"....With recent efforts to increase the level and scope and in some cases also the term of the copyright protection the amount of content available to nourish the public domain is threatened. So there are various initiatives such as the Creative Commons which seeks to carve out protected areas for use of content, and as a result the people who choose to make their materials available through Creative Commons licensing regimes or the like are actually the copyright holders who are making decisions to make sure those materials are available...."
How is the legal profession evolving?
"....In general lawyers don't do enough to explain what they do and how that role plays an important part of ensuring change and stability in society. A number of law societies are aware of this and are doing more of that type of outreach. I think other than that the legal profession continues to evolve to adapt to new modes of practice, to adapt to increase international competition, to adapt to the increasing needs of clients whose expectations have changed in particular because of digital technology...."
What is the driver behind your long-time support of non-profits?
"....To find that balance that I talked about earlier. It's a way to give back to the community some of the benefits I think I have and also a way to share and support good causes or organizations that are doing important work. In some cases I might be able to contribute in a positive way to that organization's ability to move their cause or their work forward...."
Was there a defining moment in your childhood or some kind of inspirational story that happened or a decision later in life?
"....I have a tremendous thirst for learning so it's a great way to meet people, to enrich your own life to learn about different organizations and different causes and to help to make the world a better place. Ultimately if we don't contribute ourselves individually to make the world better and we all expect somebody else to do it the world isn't going to get any better...."
In your background you also do a considerable amount of teaching and you are the co-director of the Intellectual Property program at Osgoode Hall and you teach for a number of universities. What motivates you in that realm?
"....It forces me to actually keep current and to think about the changes that are going on around me and to try to keep up with them....In every class there are some really bright and innovative thinkers and they approach problems in a completely different way. They are not thinking traditionally and in a linear manner so I really enjoy the learning experience that I get from the students as well....There's a benefit in getting to know people who are working in the field and up and coming and might be able to fit in what my firm might need...."
Can you describe some areas of controversy in the areas that you work?
"....Managing the challenges and tensions between privacy and security between the user and the service provider on those kinds of issues....Managing the tension between seeking a freedom to innovate and the protection of existing innovation....Balancing the decision making around risks and benefits in respect to the adoption of new technology such as Cloud solutions but in other industries, other types of technologies....Helping clients to manage complex disputes or complex transactions tends to raise controversies....Helping clients to seek to manage the risks involved in the adoption of new business models or new technology where legal framework is not sufficiently evolved to provide certainty...."
As a long-time contributor to ICT, do you feel computing should be a recognized profession on par with accounting, medicine and law with demonstrated professional development, adherence to a code of ethics, personal responsibility, public accountability, quality assurance and recognized credentials?
"....In my view this makes sense as self-governing professions are common in areas where there is a need for public protection and where the professionals have unique skills and the public is protected by the profession's management of the skill level for the professionals and enforcement of those standards....I think it is in society's general interest and in the Information Technologies sector's interest that the ICT profession be more widely recognized and encouraged and that be a feature that employers look at in making hiring decisions or for staff for whom they want minimum levels of competence...."
From your extensive speaking, travels, and work, do you have any stories you can share (perhaps something amusing, surprising, unexpected, amazing)?
"....I really enjoy learning and traveling and I've benefited from the opportunity to speak at many international forums and to meet people from many different sectors, Europe, South America, throughout North America, Asia, Australia and elsewhere and through that it enriches me to learn how other people solve their problems. Unfortunately I don't have an amusing anecdotal story that I can share in a public setting...."
If you were conducting this interview, in which areas would you have asked questions and then what would be your answers?
"....Getting into even into more detail about the issues of controversy in the ICT sectors in areas such as Cloud computing or social media....Drilling down further in the area of intellectual property itself....There's a wide range of interesting topics we could have gone through and the challenge really is one of time...."
Martin, with your demanding schedule, we are indeed fortunate to have you come in to do this interview. Thank you for sharing your deep experiences with our audience.