Law Times

Page 10 FOCUS January 28, 2013 Law Times • Ethics for IP lawyers Conflicts at global firms among pitfalls in Canada BY MICHAEL McKIERNAN Law Times C anada's invasion by global law firms is creating new conflict headaches for local lawyers, according to an international intellectual property lawyer. Speaking at the Law Society of Upper Canada's 17th annual intellectual property law year in review, Christopher Aide, a partner at Baker & McKenzie LLP's Toronto office, said varying approaches to conflicts across jurisdictions create ethical dilemmas for lawyers accepting and referring files over international borders. "More and more lawyers in Ontario and indeed across Canada are going to be dealing with conflicts that are faced by global law firms," said Aide at the Jan. 10 event during a discussion on ethical issues for intellectual property lawyers. "When they find themselves working at global law firms for IP or other areas, they're going to face more potential conflicts. And more importantly, they're going to face differing attitudes to conflicts from their global colleagues." According to Aide, the Supreme Court of Canada's endorsement of the "unrelated matter rule" in Strother v. 3464920 Canada Inc., which prevents a lawyer from acting without consent for two clients whose interests are directly adverse even if the two matters are unrelated, sets the bar much higher for conflicts than in many other jurisdictions. For example, regulators in England and Wales generally take the view that conflicts only arise when the matters of the two clients are related, said Aide, who added that Germany and Hong Kong adopt a similar approach. That means it's easier for lawyers there to represent one client in a tax matter and then act for another person against that client in an intellectual property dispute. "That wouldn't be particularly good for you for global law firms, for those of you curbuilding up a business relationship rently working for global law firms, with your tax client but it is technically for those of you who don't know that possible," said Aide. maybe in a few months you will be He noted Canadian lawyers need working with a global law firm, these to be particularly vigilant when acare the kind of questions that are gocepting referrals from offices in those ing to be affecting you," said Aide. countries with a looser approach to In the same session, Federal conflicts since Canadian rules would Court Justice Roger Hughes laid out flag some matters that would clear his most pressing ethical concerns conflict checks elsewhere. His advice is for intellectual property lawyers. to err on the side of caution. Chief among them was "game play"It's something I face very regularly. ing" by parties in complex trials and You can imagine with a firm like Baker patent applications. & McKenzie, we have nearly 4,000 atIn one recent trial, Hughes came torneys around the world. We have down hard on a party who he felt was over 70 offices in 43 countries. Somewhere in the world, we do something 'It's always good to do a conflict check even abusing the case management system for every big company. It's always good if it's a double check,' says Christopher Aide. of the court after springing a succession of new witnesses on the opposing to do a conflict check even if it's a double check. It's an updated check. If you do the updated party late in the trial. "I whacked them in costs and I hope the message check, and lo and behold it is a conflict, unless I can get a will start to get across that we're serious about this," said waiver from the other side, I can't take it on." Matters get hazier when Canadian lawyers have an Hughes. "You're entitled to your day in court but you're not opportunity to refer an arguably conflicted client to an international office where the problem would disappear entitled to the other guy's day, too. We have a limited amount of time we can spend on this." because of the looser rules there. When it comes to patent applications and prosecu"There are going to be some very unhappy partners in London" if they have to adhere to tighter rules that don't tions, Hughes acknowledged that not all of his colleagues are experts. apply in their own jurisdiction, said Aide. "We don't know all the nuances, we don't know all the Global law firms are still wrestling with whether to impose a "highest common denominator" approach to sort of fine points, but one thing we do know is when we conflicts across the firm and are experimenting with re- think we're being had, when we think that somebody is tainer letters seeking advance waivers of potential con- trying to pull a fast one or think that somebody is not flicts, said Aide. And Canadian lawyers had better get being fully frank and true," said Hughes. "We don't like overt manipulation of patent applicaready to join the debate, he adds, with Baker & McKenzie, Norton Rose Canada LLP, and Dentons on the tions for some seeming advantage. . . . Be a little more alert about your drafting, be a little more alert about scene here. "For those of you who are interested in working for keeping yourself up to date, and don't play games." LT WIPO tackles access to books for blind people BY MICHAEL McKIERNAN Law Times T he World Intellectual Property Organization's move to finalize a treaty on access to published works for the visually impaired is long overdue, according to a leading Canadian lawyer in the field. At its December meeting, the WIPO general assembly agreed to convene a diplomatic conference in Marrakech, Morocco, in June 2013 in a bid to hash out the details of the international pact during top-level negotiations. "It's a human rights issue at least as much as it is a copyright issue. It's sad that it's taking so long," says Howard Knopf, counsel to Ottawa firm Macera & Jarzyna LLP. "There are hundreds of millions of blind people around the world who have to struggle very hard to do what most people take completely for granted. None of them asked to be blind and they have real difficulty just from a technological standpoint doing certain things. Why would we want to make it harder for them by leaving the law in such a state that it's illegal to get access to the kind of materials that are necessary to get things done?" According to WIPO, some countries have domestic laws that grant exceptions for the use of copyrighted works by visually impaired people, but there's a void of standards at the international level. "This is a fantastic opportunity now to make this stuff available in a sensible way that doesn't undermine the rights of copyright owners and it would be a shame if 'It's a human rights issue at least as much as it is a copyright issue,' says Howard Knopf. they can't do it," says Knopf. "We can't cure blindness but we should as much as possible try to create a level playing field. Technology should be seen as an enabling aspect of this and not something to be feared." Dan Pescod, who has spent years lobbying for a treaty through the World Blind Union, says blind and partially sighted people have been living with a "book famine" that sees just five to seven per cent of works ever made available in accessible formats such as braille, audio books or large print. In the realm of electronic books, text-to-speech technology is also a rarity. He says charities are generally behind those works that are available in converted formats but notes "outdated copyright laws" remain a challenge. "When charities convert the print or digital version of a book into an accessible format, they are, of course, making a copy of the book," says Pescod. "Such a conversion does not break copyright law in countries where there is a legal exception to copyright law for the benefit of blind people. However, only a third of the world's countries have such an exception." Even when the law is on their side in one country, he says charities can't legally transfer converted files across international boundaries. "This means that the time and cost of reformatting has to be replicated by blind people's organizations in different countries across the globe, costing thousands. . . . That is money would have been better spent making more titles accessible," says Pescod. According to Pescod, opposition to a treaty has revolved around a "slippery slope" argument that new copyright exceptions for visually impaired people will lead to further exemptions for libraries and educational institutions. "However, we feel that access for blind people is too important to be sacrificed on the altar of publisher fears over slippery slopes. We are not out to undermine publishers or to change copyright law for the sake of it. We have simply asked, repeatedly, that our issue be judged on its own compelling merits rather than with the merits of other future possible laws." According to Knopf, western powers such as the United States, Canada, and www.lawtimesnews.com the European Union have traditionally favoured a non-binding "soft law" on the issue. "That kind of thing might make you feel good but it won't do very much. A treaty is the only thing that can really get this job done," he says. The mood changed in November last year when the Canadian delegation softened its position and signalled its endorsement of a stronger treaty. The European Union and the United States soon followed, a development Knopf hopes is a signal that Canada's influence at WIPO is on the rise. "Canada has been less visible in recent years than in the past, but there are signs that that is changing and we're getting reengaged and hopefully this will be part of that picture," he says. Work on a draft treaty has already begun, but Pescod says there are still question marks over a number of issues, including international transfers of accessible works and whether the treaty should cover books already available commercially in accessible formats. "Some negotiators want to require blind people's organizations to check in other countries as to what is commercially available on reasonable terms before being allowed to use the treaty," he says. "We reject this as unworkable in practice and likely to stop organizations, which would be otherwise willing to send their accessible books to those needing them in other countries, from doing so. This is certainly not over as yet and I will only celebrate its conclusion when it is signed and delivered." LT

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