Lawyer Profile Detail
Barry B. Sookman
TITLE
Partner
AREA OF EXPERTISE
Clean Technology
IP Litigation
Litigation
Outsourcing
Technology & Licensing
LAW SCHOOL
Osgoode Hall Law School
BAR ADMISSION
Ontario, 1982
Biography
Barry Sookman is a partner with McCarthy Tétrault in the Toronto office.
He is the former head of the firm’s Internet and Electronic Commerce Group. Prior to that, he was head of its Intellectual Property Group for six years. He is one of Canada's foremost authorities in the area of information technology and intellectual property law.Barry Sookman is the author of the leading three-volume text, Sookman: Computer Law: Acquiring and Protecting Information Technology (Carswell, 1989-1999); the leading five-volume text, Sookman: Computer, Internet and E-Commerce Law (Carswell, 1999-2009); and Copyright: Cases and Commentary on the Canadian and International Law, co-authored with Steven Mason (Carswell, 2009), Intellectual Property Law in Canada: Cases and Commentary, co-authored with Steven Mason (Carswell 2010). Barry Sookman is also the author of the book Computer, Internet and E-Commerce Terms: Judicial, Legislative and Technical Definitions (Carswell, 2001-2009). In addition, he is a contributing author to the following books: Gordon Henderson’s Copyright Law in Canada (Carswell, 1994); Barbara McIsaac’s The Law of Privacy in Canada (Carswell, 2000-2003), which was published by McCarthy Tètrault authors; George Takach’s The Software Business (McGraw Hill 1999); and Marco Giovanoli’s International Monetary Law: Issues for the New Millennium (Oxford 2000). Mr. Sookman is also the author of numerous articles dealing with information technology and intellectual property. As well, he is an adjunct Professor who teaches copyright at Osgoode Hall Law School, and a frequent speaker on legal issues related to computer, E-Commerce, Internet law and intellectual property.
Mr. Sookman has consistently been ranked by authoritative Canadian and international guides as among Canada’s top information technology and intellectual property lawyers. For example:
- Best Lawyers
Mr. Sookman has appeared on the cover of Lexpert magazine three times:
- June 2006 "Patent Trolls and Jury Trials, RIM’s Cautionary Tale"
- October 2003 "Getting IT: First-Mover Advantage in Information Technology"
- September 2000 "The Rise of the e-Commerce Lawyer"
Mr. Sookman is very experienced in providing advice in connection with complex information technology/intellectual property transactions including outsourcing and other strategic procurement relationships, joint venture transactions, and licensing. He has been involved as lead lawyer in Canada’s biggest and most complicated domestic and international outsourcing deals.
He also provides advice in connection with protecting and exploiting intellectual property and new media products, and has extensive expertise on legal issues related to copyrights, privacy and data protection, E-Commerce and the Internet.
Mr. Sookman is also very experienced in intellectual property and information technology litigation and arbitration proceedings. In addition to providing strategic advice in connection with high-profile IP litigation, he has been involved as counsel in numerous cases, including the following:
- SOCAN
Mr. Sookman is a member of the Joint Copyright Committee of the Canadian Bar Association and Patent Trademark Institute of Canada (PTIC). Mr. Sookman is a past chairman of the Canadian Bar Association ― Computer and Computer-Related Technology section. He is a member of the Association Litteraire et Artistique Internationale, the Computer Law Association and ITAC’s Legal Affairs Committee. Mr. Sookman is a former director of the Canadian IT Law Association. He is also a member and former member of the executive of the Toronto Computer Lawyers’ Group, and a member of the Licensing Executive Society and the Copyright Society of the USA. He is also a member of Osgoode Hall Law School’s IP Osgoode Advisory Board and the advisory board of the Canadian Chamber of Commerce’s Canadian Intellectual Property Council (CIPC). He is a graduate of Osgoode Hall Law School (1980) and was called to the Ontario bar in 1982. Mr. Sookman holds a BA from Concordia University (Interdisciplinary Studies in Science and Human Affairs) and a Master’s in Environmental Studies (MES) degree from York University (1980).
Schedule to Barry Sookman’s CV
Legal Writings and Lectures
Books and Articles:
Sookman: Computer, Internet and E-Commerce Law (five volume treatise) (Carswell 1999-2010)
Sookman: Computer Law: Acquiring and Protecting Information Technology (three volume treatise)(Carswell 1989-1999)
Sookman: Computer, Internet and E-Commerce Terms: Judicial, Legislative and Technical Definitions (Carswell 2001-2009)
Copyright Cases and Commentary on the Canadian and International Law (Carswell, 2008) (co-authored with Steven Mason)
Intellectual Property: Cases and Commentary on the Canadian Law (Carswell, 2010) (co-authored with Steven Mason)
Copyright Reform for Canada: What Should We Do?, Woodrow Wilson International Center for Scholars, Issue 11, September, 2009
Barry Sookman, Copyright Reform for Canada: Consultation Submission (2009) 2 Osgoode Hall Rev. L. Pol’y 73; also published at 22 IPJ 1.
Why Canada Should Not Adopt Fair use: A joint Submission to the Copyright Consultations, (with Dan Glover) (2009) 2 Osgoode Hall Rev. L. Pol’y 55, also published at 22 IPJ 29
More Fickle than Fair: Why Canada Should Not Adopt A Fair Use Regime (with Dan Glover) The Lawyers Weekly,
What Happens When Copyright Goes Digital, August 6, 2009 (with Stephen Stohn), National Post
Case comment on the CCH v. Law Society Case (in the Computer Technology Law Reporter)
Barry Sookman "The SAC Proposal for the Monetization of the File Sharing of Music in Canada: Does it Comply with Canada’s International Treaty Obligations Related to Copyright? 21-2 I.P.J. 159 – 189; also (2008) 1 Osgoode Hall Rev. L. Pol’y. 101
Barry Sookman "Facebook Fair for Copyright of Canada: Replies to Prof. Geist (2008) 1 Osgoode Hall Rev. L. Pol’y. 198
Barry Sookman "The Challenges to Privacy Posed by Technology" in Barbara McIsaac’s The Law of Privacy in Canada (Carswell, 2000 – 2001)
Barry Sookman and Bradley Crawford "Electronic Money: A North American Perspective" in International Monetary Law: Issues for the New Millennium (Oxford University, 2000)
Barry Sookman "Legal Framework for E-Commerce Transactions" [2000] C.T.L.R. 85
Barry Sookman "Protection of Databases" in Copyright in Cyberspace (Otto Cramwinckel, 1997)
Barry Sookman "Copyright and Technology" in Henderson’s Copyright Law of Canada (Carswell, 1994)
Barry Sookman "Protecting Intellectual Property Rights in Computer Products and Related Technology" in George S. Takach’s The Software Business in Canada (McGraw-Hill Ryerson Limited 1997)
Barry Sookman "Knowledge-Based Businesses: The Business of the Future" in Business Law & Litigation: Trend Spotting for the 21st Century (for the 1999 Isaac Pitblado Lectures)
Barry Sookman "E-Commerce, Internet and the Law: A Survey of the Legal Issues" Vol. 48, UNB L.J. 119 (1999)
Barry Sookman "Copyright and the Information Super Highway: Some Issues to Think About" 11 I.P.J. 123 (1997) (Part 1) and 11 I.P.J. 265 (1997) (Part 2)
Barry Sookman et al "International Trade in Computer-Related Technology: The Impact of GATT and NAFTA" in Computer Law & Practice, Vol. 10, No. 3, (1994)
Barry Sookman "Developments in Information Technology Law" [1997] 5 C.T.L.R. 209
Barry Sookman "The North American Free Trade Agreement and Computers: A Summary," Vol. 1, No. 5 Focus Americas (August, 1995)
Barry Sookman "International Differences and Copyright Protection for Software," [1995] 5 C.T.L.R. 137
Barry Sookman "Canadian Computer Litigation: Where Are We and Where Are We Going?" Vol. 10, No. 11, Software Protection (April 1992)
Barry Sookman "Computer-Assisted Creation of Works Protected by Copyright" 5 I.P.J. 165 (1990)
Barry Sookman "Création Assistée par Ordinateur d’Oeuvres Protégeés par Le Droit D’auter, Vol. 2, No. 2, Les Cahiers du Propriété Intellectuelle (Jan. 1990)
Barry Sookman "Liability of Geographic Information System Providers" International Computer Law Advisor, (February 1990)
Barry Sookman "ALAI National Report on Computer-Assisted and Computer-Generated Works" in L’informitique et Le Droit D’auteur, (Les Editions Yvon Blais Inc., 1989)
Lecturers and Speeches Related to Computer, Internet, E-Commerce Law and Intellectual Property
January 14, 2010, 14th Annual Law Society Intellectual Property Law – The Year In Review (Copyright 2009)
October 22-23, 2009 – IT.CAN, 13th Annual Canadian IT Law Association Conference, Conference Co-Chair, and Current Trends in Limits of Liability and Indemnification (Moderator)
October 14, 2009 – Woodrow Wilson Center: Internet Piracy: Copyright Law in Canada and the United States
September 30, 2009 - Conference Board: Intellectual Property Rights Roundtable in Ottawa
September 25, 2009 – Woodrow Wilson International Center for Scholars: Copyright Law in Canada and the United States: The Digital Challenge
August 10, 2009 – Halifax Roundtable on Copyright Consultation for Minister of Canadian Heritage and Official Languages
May 29, 2009 – McCarthy Tétrault LLP Anti-Spam Bill Raises Concern (Webinar with Lorne Salzman and Charles Morgan)
May 19, 2009 – TCLG & E-Commerce Section of OBA: Year in Review, Developments in Computer, Internet and E-Commerce Law
April 30, 2009 – May 1, 2009 – IT.CAN LSUC Annual Spring Training Program
February 23, 2009 – ITAC, Copyright Reform in Canada Bill C-61 – An Overview
January 15, 2009 – LSUC 13th Annual IP Law: Year in Review, Update on Copyrights presentation with Glen Bloom
October 27, 2008 – IT.Can, 12th Annual Canadian IT Law Association Conference, Moderator
October 22, 2008 – Insight Conference: Entertainment Industries Summit:
Emerging and Ongoing Canadian Copyright IssuesMay 28, 2008 – Conference Board: Intellectual Property Rights Conference: A Catalyst for Innovation
May 14, 2008 – Insight Conference: (Program Chair) Copyright in Canada
April 3, 2008 – Open Innovation/Collaboration: Technology in Bloom, New Developments in Technology Law (OBA)
March 30, 2008 – Insight Conference: (Moderator) Global Licence for the Monetization of the File-Sharing of Music on the Internet
January 18, 2008 – Law Society of Upper Canada, 12th Annual IP Law: Year in Review Conference: Are IP Rights Out of Control?
November 20, 2007 – York University, Recent Computer and Internet Law Developments in IP
October 23, 2007, Canadian Institute: (Moderator) Entertainment Industries Summit
September 19, 2007, Ministry of Government Services Commercial Law Group: Risk Issues in Outsourcing
June 27, 2007, Toronto Computer Lawyers’ Group, "The Year in Review: Computer, Internet and E-Commerce Law"
June 15, 2007, Osgoode Hall Law Professional Program, "Copyright Remedies"
May 23, 2007, Computer Law Association (Host) "Computer Intelligence"
May 14, 2007, 7th Annual IT.Can IT Law Spring Program, "Security and Privacy Issues in Outsourcing Transactions"
March 22, 2007, Canadian Institute: (Moderator) Copyright Reform: Protecting Creators’ Rights in the Digital Age
March 21, 2007, Booknet Canada: Technology Forum 2007: Digitization and the Future of Canadian Publishing: The Fight over Copyright
February 28, 2007, Dalhousie Law and Technology Institute: User Rights and Copyright: Right, Metaphor, Red Herring?
October 26, 2006 – Insight: Entertainment Industry Summit, Toronto, "Copyright Reform: Bringing Canada Up to Global Standards" (Moderator of Panel)
October 5-7, 2006 – Future of Music: 6th Annual Summit, "Format Wars: Digital Rights Management and Interoperability"
September 26, 2006 – Toronto Computer Lawyers’ Group: Annual Conference, "The Year in Review 2005-2006"
June 23, 3006 – CIO Canada: Outsourcing Summit 2006, "Termination or Remediation ― Resolving a Bad Deal”
May 29-30, 2006 – IT.Can: 6th Annual Spring Training, "IT Law Considerations for Online Transactions"
May 25-26, 2006 – Osgoode: IP Licence Agreements, "Representations and Warranties in Licence Agreements"
April 23-25, 2006 – International Publishers’ Association: 6th Annual Copyright Symposium, "Tensions in Copyright"
April 21, 2006 – Fordham University: 14th Annual IP Conference, "IP Law and Policy, Canada and Copyright: Rogue State or Role Model?"
April 6, 2006 – Licensing Executive Society: "RIM ATS NTP: "What Happened?"
March 24, 2006 – ALAI Canada: "Influence on Canadian Copyright Law"
March 27, 2006 – OBA: Technology in Bloom 2006, "Recent Copyright Developments"
March 3, 2006 – Rotman School of Business: "Protection for Technological Measures in Canada — What Should Canada Do?"
January 25, 2005 – "Information Outsourcing" CLA Conference (Host)
February 15, 1005 – "Sound Bytes, Sound Rights: Canada at the Crossroads of Copyright Law: The Music Industry after BMG v. John Doe," University of Toronto Conference
February 15, 2005 – "Implications of the Patriot Act on Outsourcing in Canada," (Chair) IT Canada Roundtable
February 24, 2005 – "Software and Technology Agreements," Insight Conference
April 8, 2005 – "Is Copyright Keeping Up With Changes in Technology?" CBAO Conference on Technology In Bloom
April 8, 2005 – "Distribution Challenges in the Digital Universe," Law Society of Upper Canada
May 12, 2005 – IT.Can Spring Training Program (Chair)
June 1, 2005 – "The Year in Review," Toronto Computer Lawyers’ Group
June 16, 2005 – “To Outsource or Not: Yes, No, Maybe ―– How Will I Know?” CIO Outsourcing Summit
September 15, 2005 – "Technological Protection Measures: Do the Anti-Tampering Provisions Go Too Far, or Not Far Enough?" Insight: Copyright Reform in Canada
September 16, 2005 – "Recent Issues in Copyright," Association of Corporate Counsel, Mount Tremblay
September 16, 2005 – Insight Conference on Copyright Reform (Chair)
October 3, 2005 – "Canadian Copyright Reform – An Overview for the Canadian Publishers’ Counsel,"
October 25, 2005 – "Bill C-60 and Copyright Reform in Canada – The Issues, Players, and Moving Forward," Osgoode Forum
October 28, 2005 – IT.Can Annual Meeting, "International IT Law Update" (moderator), and debate (with David Basskin) and Professor Kerr and Professor Geist on legal protection for technological protection measures
October 6, 2004 – "Significant Issues in Internet Law," CASCON 2004
September 20, 2004 – "The implications of the Tariff 22 Decision," IT.Can
September 19, 2004 – "Internet Liability: The Tariff 22 Case," CBAO
June 4, 2004 – "Copyright in the Internet Age," CAB, CCTA Copyright Symposium
June 2, 2004 – "Critical Issues in Outsourcing," CIO Outsourcing Summit
May 31, 2004 – "Computer and Internet Law: A Year in Review," Toronto Computer Lawyers’ Group
May 26, 2004 – "Protecting Intellectual Property Rights in IT Products" (Moderator of panel), IT.Can Spring Training Programme
May 26, 2004 – "Originality in Copyright Law" (Moderator of panel) ALAI Conference
May 11, 2004 – "Law and Politics of Open Source," University of Toronto
April 6, 2004 – "The implications of the CCH v. Law Society Case for Canadian Publishers," Canadian Copyright Institute AGM
March 30, 2004 – "Internet Jurisdiction," Netlaw
February 25, 2004 – "New and Changing Business Models for Distribution of Music and Other Content," MIT/Schulich Enterprise Forum
February 7, 2004 – "IP issues in Public Procurements," the IP Procurement Conference
October 24, 2003 – IT.Can "Developing Interoperable and Competing Products Under Copyright and Trade Secret Law"
October 14, 2003 – Dalhousie University, Law and Technology Eminent Speaker speech "Influence of American Copyright on Canadian Copyright Law"
October 2, 2003 – IT.Can Moderated Talk on Electronic and Internet Evidence
May 28, 2003 – Toronto Computer Lawyers’ Group "IT-Internet Law – The Year in Review"
May 13, 2003 – IT.Can "Internet Law Update"
May 5, 2003 – CIO Summit panellist on Legal Issues in Outsourcing
March 4, 2003 – 45th Circuit "Enforceability of On-line Contracts"
January
21, 2003 – ALAI Canada "Influence of American Copyright Law in Canada"May 29, 2002 Insight –Jurisdiction and the Internet
May 14, 2002 Toronto Computer Lawyers’ Group – "Annual Computer/Internet Year in Review"
April 22, 2002 CCCA Conference – Protecting Intellectual Property Rights in the Canadian and International Market Place
April 6, 2002 IT.Can Conference on Managing and Minimizing Foreign Jurisdictional Risks on E-Commerce
March 21, 2002 NetLaw Conference – E-Commerce
January 24, 2002 Chair IT.Can Roundtable on Privacy
December 5, 2001 Canadian Institute – Structuring IP Licence Agreements
November 7, 2001 CBAO – Privacy - What is Personal Information?
June 20, 2001 Canadian Institute – E-commerce Issues
June 2001 Osgoode Hall Law School – Commercial Legal Drafting in E-Commerce
March 26, 2001 Canadian Bar Association – Internet and E-Commerce
March 8, 2001 Net Law Conference – chaired conference and gave speech on E-Commerce Legislation
February 12, 2001 Canadian Institute – Due Diligence in Internet and E-Commerce Transactions
January 15, 2001 – Law Society Conference on Protecting Intellectual Property in Information Technology Assets (chaired conference)
December 6, 2000 Canadian Institute – Structuring IP Licence Agreements
November 15, 2000 Canadian Institute – Privacy Protection in Canada
November 10, 2000 University of Waterloo – Incorporating Privacy into Security Domain
October 31, 2000 Insight – Legal Framework for E-Commerce Transactions
October 26/27, 2000 Fried Frank in New York – Critical Issues for General Counsel: Emerging Issues in Technology Law
October 19/20, 2000 IT.Can – From Bricks to Clicks: E-Business, Moderated Panel on International Internet Regulatory Issues
October 11, 2000 Institute for International Research – E-Commerce Law: Implementing Legally Compliance E-Commerce Programs to Mitigate Risk and Reduce Loss
October 4, 2000 Ontario Chapter of Risk & Insurance Management – Cyber-Risk: E-Commerce and Risk Management
September 26, 2000 Institute for International Research – Privacy 2000 Conference – Developing a Privacy Policy for Your Internet Site that Fosters Customer Confidence and Ensures Compliance with Legislation
September 22, 2000 Marsh Canada – Liabilities Arising from Internet and E-Commerce (E-Commerce)
September 7, 2000 University of Toronto Centre for Innovation Law & Policy – E-Commerce Legislation in Canada
June 27, 2000 Canadian Institute – Intellectual Property On-Line
June 2, 2000 Canadian German Association – E-Commerce Law Issues
May 26 2000 McKinsey & Co. – gave speech to McKinsey clients on Turbo Charging Internet Businesses
May 9, 2000 Toronto Computer Lawyers’ Group – Caselaw Update
May 4, 2000 IT/CAN Law Association – Bill C-6, Privacy and Internet Issues
April 18, 2000 Television Interview with CBC – Copyright and the Internet
March 31, 2000 - Public Key Infrastructures (PKIs): Practical and Legal Considerations for Maintaining Privacy and Confidentiality in E-Commerce - Netlaw 2000 Conference
March 31, 2000 Canadian Institute – Netlaw Conference – Public Key Infrastructures and E-Commerce
March 22, 2000 INFONEX – Minimizing and Managing Risks Involved in Internet Commerce
March 19, 2000 INFONEX – Bullet-Proofing Your On-Line Business
January 28, 2000 Canadian Bar Association Institute – Developing and Implementing Privacy Policies
January 27, 2000 - Security of Information on the Internet – CBAO
January 27, 2000 Canadian Bar Association Institute – Security of Information in E-Commerce Transactions
December 9, 1999 - Liability Without Leaving Home: The Law of the Internet - The Canadian Institute
November 19, 1999 - Knowledge-Based Businesses: The Businesses of the Future - Pitblado Lectures - The Law Society of Manitoba
October 14-15, 1999 - Bill C-54: Sharing Information and Targeting Customers - Insight Second Annual 1999 Advertising Forum
September 13, 1999 - Security and Confidentiality Issues in E-Commerce - The Institute for International Research
June 17, 1999 - Protecting Intellectual Property Rights in E-Commerce - First Joint Canadian IT Law/CLA Conference (Moderator)
April 12, 1999 - Privacy and Security Issues in E-Commerce - Netlaw Conference
March 25, 1999 - Legal Issues Involving E-Commerce and the Internet – CBAO
February 24, 1999 - Information and Data Privacy – E-Commerce in the Year 1999
February 23, 1999 - Legal Issues Related to the Year 2000 - Infonex Conference (Chair)
February 9, 1999 - Information Technology Law Up-Date – gave speech to the Toronto Computer Lawyers’ Group
November 30, 1998 - The Law of E-Commerce, Strategy Institute
November 26, 1998 - E-Commerce, Second Annual Canadian Information Technology Law Conference
November 5, 1998 - Commerce on the Internet: Legal Issues, Paper on Corporate Internet Policies (Chair of Conference)
October 20, 1998 - Copyright and Content Issues on the Web, International Trademark Association Annual Meeting
October 6, 1998 - Contracting for Information Technology, Osgoode Hall Law School
September 24, 1998 - Outsourcing Contracts Conference, Federated Press (Chair)
June 22, 1998 - Intellectual Property in the Digital Universe, Infonex (Chair)
April 18, 1998 - Copyright and the New Digital Agenda, New Developments in Communications Law and Policy: Towards the Millennium, Law Society of Upper Canada
March 2, 1998 - Contracting for Information Technology - Outsourcing Agreements, Osgoode Hall Law School Professional Development Program
February 24, 1998 - Expert Purchasing of Information Technology, Federated Press (Chair)
January 29, 1998 - Doing Business Over Global Networks - CBAO Ontario
November 27 and 28, 1997 - co-chaired and organized first Canadian conference of the Information Technology Canada Law Association
September 17, 1997 - Osgoode Hall Law School Continuing Legal Education Programme - Organized and chaired conference on "Doing Business on the Internet"
September 10, 11, and 12, 1997 - ITU Conference Switzerland – "Jurisdiction and the Internet"
June 13, 1997 - Dayton School of Law – "Jurisdiction and the Internet"
June 3, 1997 - Canadian Business Press – "Legal Issues Involved in On-Line Publishing"
April 29, 1997 - Infonex - "Intellectual Property Issues for Business Agreements"
April 24 & 25, 1997 - Computer Law Association Washington - "Legal Developments in Information Technology and Communications in Canada"
March 25, 1997 - Osgoode Hall Law School Continuing Legal Education Program - "Legal Implications of Doing Business over the Internet"
March 7, 1997 - "Legal Issues Related to the Internet" (Canadian Music Week)
January 14, 1997 - Speech to Toronto Computer Lawyers’ Group - "Recent Developments in Information Technology Law"
October 30, 1996 - York University, Osgoode Hall Law School - "Copyright and Information Technology"
April 18, 1996 - Thomson & Thomson Forum - "The Impact of New Technologies on Copyright"
April 9, 1996 - Toronto Computer Lawyers' Group - "Case Law Update"
March 21 & 22, 1996 - National Intellectual Property Law Institute - "Strategic International Issues in Enforcing Copyright Issues in Computer Software"
February 23, 1996 - Moderator Colloquium of ALAI Canada on Multi- Media and Information Highways
February 1, 1996 - Canadian Business Press Seminar - "An Editor's Guide to Going On-Line"
June 19 & 20, 1995 - Insight Conference - "The Business of Licensing and Merchandising Legal and Practical Issues for Successful Licensing"
March 29, 1995 - Infonex Conference - "Software and the Electronic Distribution of Information Products"
June 9, 1994 - University of Dayton School of Law Conference on Significant Developments in Computer Law - "An Outsider's View of United States Copyright Protection for Software"
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