Bio & expertise

barry-sookman

Barry Sookman is a senior partner with McCarthy Tétrault in the Toronto office. He is the former Co-Chair of the firm’s Technology Law Group and was the 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, Internet, intellectual property, and privacy/anti-spam law.

Barry Sookman is the author of the leading seven-volume treatise, Sookman: Computer, Internet and E-Commerce Law (Carswell, 1999-2016); Copyright: Cases and Commentary on the Canadian and International Law, co-authored with Steven Mason and Prof. Carys Craig (2nd. Ed. Carswell, 2013), Intellectual Property Law in Canada: Cases and Commentary, co-authored with Steven Mason and Dan Glover (2nd. Ed. Carswell 2013); Computer, Internet and E-Commerce Terms: Judicial, Legislative and Technical Definitions (Carswell, 2001-2015); and Sookman: Computer Law: Acquiring and Protecting Information Technology (Carswell, 1989-1999). 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 intellectual property at Osgoode Hall Law School.

Mr. Sookman is very experienced in providing advice in connection with complex information technology/intellectual property transactions including outsourcing and other strategic procurement relationships, cloud computing, SAAS, military procurement, joint venture transactions, and licensing. He has been involved as lead lawyer in Canada’s biggest and most complicated domestic and international outsourcing and cloud computing deals. He regularly acts on transactions which must meet regulatory requirements including the OSFI-B10 Outsourcing Guideline. He also provides advice in connection with protecting and exploiting intellectual property and new media products.

Barry Sookman also has a myriad of experience dealing with privacy and data protection issues including compliance with PIPEDA, and cross-border data flows. He also has extensive experience assisting clients in conducting business over the Internet including drafting web site terms and conditions and meeting regulatory requirements such as for writings and signatures.

He is also one of Canada’s leading lawyers on Canada’s anti-spam law CASL. This includes giving advice in connection with CRTC investigations and in connection with CASL’s private right of action.

Mr. Sookman is very experienced in intellectual property and information technology litigation and arbitration proceedings. He has extensive expertise in copyright matters including in anti-piracy, ant-counterfeiting, copyright enforcement, and infringement proceedings including infringements related to computer and entertainment software, software, music, books, audiovisual and other works, technological protection measures, Internet disputes, and rights clearances matters.

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:

  • Equustek Solutions Inc v Google Inc (Supreme Court of Canada) file 36602
  • Canadian Broadcasting Corp. v. SODRAC 2003 Inc., 2015 SCC 57 (Supreme Court of Canada)
  • Cinar Corporation v. Robinson, [2013] 3 SCR 1168 (Supreme Court of Canada)
  • Entertainment Software Association v. Society of Composers, Authors and Music Publishers of Canada, 2012 SCC 34 (Supreme Court of Canada)
  • Alberta (Education) v. Canadian Copyright Licensing Agency (Access Copyright), 2012 SCC 37 (Supreme Court of Canada)
  • SOCAN v. Canadian Assn. of Internet Providers [2004] SCC 13 (Supreme Court of Canada)
  • CCH Canadian Ltd. v. Law Society of Upper Canada [2004] SCC 13 (Supreme Court of Canada)
  • Robertson v. The Thomson Corporation [2006] 25 C.R. 363 (Supreme Court of Canada)
  • Planification-Organisation-Publications Systèmes (POPS) Ltée v. 9054-8181 Québec Inc., 2014 FCA 185
  • Equustek Solutions Inc. v. Google Inc., 2015 BCCA 265
  • Alberta (Education) v. Access Copyright, 2010 FCA 198
  • Canadian Wireless Telecommunications Association v. SOCAN [2008] FCA 6
  • Apple Canada Inc. v. Canadian Private Copying Collective 2008 FCA 9
  • Apple Canada Inc. v. Canadian Private Copying Collective, 2007 FCA 338
  • Delrina Corp. v. Triolet Systems Inc. [2002] 17 C.P.R. 289 (Ont. C.A.)
  • Delrina Corp. v. Triolet Systems Inc., 2002 CanLII 45083 (ON CA)
  • Nintendo of America Inc. v. Camerica Corp. [1991], 34 C.P.R. (3d) 193 (Fed. T.D.), affirmed [1991] 31 C.P.R. (3d) 352 (Fed. C.A.)
  • Weitzman v. Hendin (C.A.), 1989 CanLII 4185 (ON CA)
  • Consumers Glass Co. Ltd. v. Foundation Co. of Canada Ltd., 1985 CanLII 159 (ON CA),
  • Keatley Surveying v Teranet, 2016 ONSC 1717
  • Keatley Surveying Ltd. v. Teranet Inc., 2013 ONSC 1361
  • Robertson v. ProQuest Information and Learning LLC, 2011 ONSC 26
  • Tariff 22 Proceeding (Making Available Right) (Copyright Board)
  • Tariff 22 Proceeding (the Internet Copyright Tariff) [1999] 1 C.P.R. (4th) 417 (Copyright Board)
  • Gemologists International Inc. v. Gem Scan International Inc. [1986], 7 C.P.R. 225 (Ont. H.C.)
  • 394363 Ontario Ltd. v. Fuda, 1983 CanLII 1627
  • York Condominium Corp. No. 335 v. Cadillac Fairview Corp. Ltd.; Village Masonry Contractors Ltd. et al., Third Parties, 1983 CanLII 1734 (ON SC)
  • Sega Enterprises Ltd. v. Codemasters Limited (unreported UK proceeding) Chambers Global (2015-2016)

Barry Sookman also has a substantial following in social media. He is a leading Canadian blogger on copyright, Internet, information technology, privacy and CASL issues at his blog barrysookman.com which has been recognized in the 2012 and 2013 Clawbies. He also has a large following on Twitter @bsookman and LinkedIn @bsookman.

Mr. Sookman has extensive involvement in government relations activities and has appeared on numerous occasions before Parliamentary committees including in relation to amendments to the Copyright Act, Canada’s anti-spam law (CASL), and the Trans-Pacific Partnership (TPP).

Mr. Sookman has consistently been ranked by authoritative Canadian and international guides as the top or among Canada’s top information technology, intellectual property, and privacy lawyers. For example:

  • Chambers Global (2005-2017) Information Technology: Consistently ranked as a “Star Individual” (higher than Band 1). “He wears the IT crown”. “Barry Sookman’s clients consider him to be in a class of his own in Canada – no one else has his depth and breadth of knowledge and technological expertise.”  “Peers especially highlight his commercial IT and IP work, particularly in relation to copyright litigation and procurement transactions.” Clients describe him as “lucid in his approach and capable of absolutely brilliant advice.” “Barry Sookman is reputed for his top-rated copyright practice. He leads the firm’s technology law group and is recognized as a leading practitioner in this area.” “He is very talented”. He “is a leading light in Canada for IT and comes highly recommended for his knowledge of computer, internet and e-commerce law.” “He has an IQ of 190 zillion; he is remarkable. He is incredibly thorough, is very perceptive and quick.” He “is recognised for his knowledge of both IT and IP law, and is also well regarded for copyright work.” “He is one of only a few lawyers with that type of expertise.” “Barry Sookman is a name that stands out in Canada for IT. He is widely acclaimed for his knowledge of computer, internet and e-commerce law. One interviewee enthused: “He is terrific, awesome – a great speaker and educator.”” “Sources describe Barry Sookman as “the pre-eminent lawyer in the sector,” and say: “He puts law in the context of business and keeps on top of the legislation.” He is a renowned authority on IT, internet and copyright matters.” “Barry Sookman is outlined as being “in a class of his own.” One of the pioneers of Canadian IT law, he offers unparalleled depth in outsourcing work and litigious matters, and utilises his IP expertise to assist clients with a range of multidisciplinary work.” “Star individual Barry Sookman is widely respected as “one of the leading lawyers in Canada” for technology law, offering unparalleled multidisciplinary proficiency in IP concerns. He wins the widespread respect of his peers for his extensive expertise in outsourcing and for his prowess as a litigator: “He is a total force in this area – he is outstanding.” One client enthused: “He is the best in Canada and has to be one of the best lawyers internationally I have ever dealt with.“”
  • Chambers Global (2015-2017) Intellectual Property (ranked highest in Band 1): “Barry Sookman is universally regarded as one of Canada’s foremost authorities on information technology and intellectual property issues. One client enthused: “He is excellent – he has the knowledge, the passion and the experience of how to navigate a matter to a successful conclusion.” “Barry Sookman is a renowned copyright expert, who recently acted for Music Canada as an intervener in an infringement case before the Supreme Court of Canada. Sources refer to him as “top-notch,” and say he “has his finger on the pulse of new market developments.”” “Barry Sookman is a recognised leader in the area of copyright, where he holds a wealth of experience.” “Barry Sookman is a recognised leader in the area of copyright, where he holds a wealth of experience. His work highlights include representing Teranet in copyright class action litigation against map surveyors in Ontario.” “Barry Sookman has a “great reputation” in the market as a talented lawyer who “wrote the book on IP and technology law.” He is particularly applauded for his work in copyright infringement matters.”
  • Chambers Global (2015-2017) Canada, Privacy & Data Protection (ranked in Spotlight Table and Band 2) “Barry Sookman of McCarthy Tétrault LLP is a major player in the e-commerce and IT space, and is widely viewed as a “thought leader” on CASL issues. One client enthused: “He provides wise counsel and has a great sense of the broader picture. He gives us great confidence in dealing with the regulators.” “Barry Sookman of McCarthy Tétrault LLP is a major player in the e-commerce and IT space, and is widely viewed as a “thought leader” on CASL issues. One client enthused: “He provides wise counsel and has a great sense of the broader picture. He gives us great confidence in dealing with the regulators.”” “Barry Sookman of McCarthy Tétrault LLP is a prolific technology lawyer who is “at the forefront of sophisticated thought about CASL.”
  • Canadian Legal Lexpert Directory (2003-2016): Listed in Computer and IT Law (Highest ranking -Most Frequently Recommended Lawyer), Technology Transactions (Highest ranking -Most Frequently Recommended), and Intellectual Property Law (Consistently Recommended) categories.
  • The Legal 500 Canada (2017) Listed in Technology, Media, Telecoms (Leading Lawyers) “Toronto-based Barry Sookman is widely regarded as a market leader and advised the International Federation of Film Producers Associations and the International Federation of the Phonographic Industry, as interveners, in a landmark case ordering a search engine to delist websites from search indexes globally.”
  • Best Lawyers (2008-2015) Ranked as the best Technology Lawyer of the Year, 2010, 2011, 2015, and 2017.
  • Who’s Who Legal: Canada (2011-2015) Canada: Technology Media & Telecommunications: “Most Highly Regarded” Individual. “Peers describe him as a “seasoned lawyer” who is in a “class of his own”. “He is “the doyen on internet work” and is a “legend”. “Barry Sookman is described by peers a ‘world class’ and ‘an inspiration for other lawyers operating in this space’.” “Barry Sookman is in “a class of his own” according to our sources. Based in Toronto, his practice encompasses information technology and intellectual property matters including outsourcing, joint ventures, and licensing”. “Barry Sookman is a “major player” in the field and one of Canada’s “pre-eminent” practitioners advising upon information technology, internet, copyright and privacy law matters. He is described as practising at the forefront of the discipline and “has a close eye on industry developments.””
  • Euromoney Legal Media Group’s Managing IP (2013) award for Canada’s Outstanding IP Practitioner.
  • Lexpert/American Lawyer Guide to the Leading 500 Lawyers in Canada published by Lexpert and American Lawyer (2003-2016): Top-ranked lawyer in Computer & IT Law and Technology Transactions.
  • Iam: The World’s Leading patent and Technology Licensing Lawyers (2011-2015): “Barry Sookman garners plaudits for his commercial awareness and ‘enterprising approach’ to licence agreements”; among “’the absolute elite of licensing experts’. He maintains a thriving practice encompassing IP and IT transactions for an international clientele.” “Barry Sookman has a wealth of experience in tech. he excels in transactions.” Barry Sookman “brings experience and quality to the table and is a pleasure to learn from.”
  • Guide to the World’s Leading Technology, Media & Telecommunications Lawyers (2008): Ranked as the number one lawyer in Canada and among the world’s top three lawyers in the technology, media and telecommunication category. Lexpert Magazine (2006): Top-ranked lawyer on list of “Canada’s 100 Most Creative Lawyers.”
  • Who’s Who Legal: The International of Who’s Who of Business Lawyers (2008-2013): Described as the “highly capable Co-Chair of the Technology Group and former head of the Internet & e-Commerce Group.”
  • Guide to the Leading US/Cross-border Corporate Lawyers in Canada (2010) published by Lexpert. Leading Lawyer in Technology Transactions.
  • Legal Media Group Best of the Best, Guide to the World’s Leading Lawyers (2009): Listed as one of the top Information technology experts in the world.
  • Legal Media Group Best of the Best, Guide to the World’s Leading Lawyers (2005): Ranked as the top lawyer in Canada and listed among the Top 10 lawyers in the world in the fields of technology, media and telecommunications.
  • PLC Which Lawyer? (2008): Ranked as a “Highly Recommended Individual” in the outsourcing category and as one of two leading individuals in the telecom and IT category.

Mr. Sookman’s books have been cited, referred to or quoted from approvingly in numerous cases such as:

  • Andrews v. McHale, 2016 FC 624
  • Biocad Medical Inc.. c. Panthera Dental inc., 2016 QCCS 3096
  • Seggie c. Roofdog Games Inc., 2015 QCCS 6462
  • R. v. Avanes et al., 2015 ONCJ 606 (CanLII) (electronic evidence)
  • R. v. C.M., 2012 ABPC 139 (electronic evidence)
  • Century 21 Canada Limited Partnership v. Rogers Communications Inc., 2011 BCSC 1196 (electronic contracting)
  • Toronto-Dominion Bank v e-Funds Limited, 2008 CanLII 88205 (CA TMOB) (evidence)
  • Conexsys Systems Inc. c. Aime Star Marketing Inc., 2003 CanLII 33339 (QC CS)
  • Delrina Corp. v. Triolet Systems Inc., 2002 CanLII 11389 (ON CA) (copyright, computer software)
  • Mensys Business Solution Centre Ltd. c. Drummond RCM, 2002 CanLII 41481 (QC CS) (remedies)
  • Angoss International Ltd. v. The Queen, 1999 CanLII 250 (TCC) (tax)
  • Corporation de l’École des hautes études commerciales de Montréal c. 3178277 Canada inc., 1998 CanLII 12140 (QC CS)
  • Northwest Marine Technology, Inc. v. Crosby, 1996 CanLII 1474 (BC SC)
  • Prism Hospital Software Inc. v. Hospital Medical Records Institute, 1994 CanLII 1308 (BC SC) (remedies)
  • Delrina Corp. v. Triolet Systems Inc., (1993), 47 C.P.R. (3d) 1, 9 B.L.R. (2d) 140 (Ont. Gen. Div.)
  • North American Systemshops Ltd. v. King, 1989 CanLII 3181 (AB QB) (electronic contracting)

Mr. Sookman’s expertise in intellectual property, technology and related subject matter was recognized by Justice Morden of the Ontario Court of Appeal in Delrina Corp. v. Triolet Systems Inc., 2002 CanLII 45083 (ON CA) where he awarded costs to his client at a higher scale given Mr Sookman’s “special expertise stating “It is demonstrated to our satisfaction that Mr. Sookman possesses the special expertise referred to in the tariff, an expertise which is relevant to this case. His practice area lies in intellectual property, technology law, and related subjects, and he is the author of three substantial texts in this field. We have no doubt that this experience was particularly relevant to the preparation and presentation of this appeal.”

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 has also appeared on the cover of CBA National magazine’s September 2013 “Is your law firm exposed to cyber-espionage?”

Mr. Sookman is a member of the Copyright Committee of the 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 also a member of the advisory board of the global think tank CIGI. He is a graduate of Osgoode Hall Law School (1980) and was called to the Ontario bar in 1982.

Mr. Sookman holds a J.D. from Osgoode Hall law School, BA from Concordia University (Interdisciplinary Studies in Science and Human Affairs) and a Master’s in Environmental Studies (MES) degree from York University.

* Profile photo, Copyright 2012, The Law Society of Upper Canada. reproduced with permission of The Law Society of Upper Canada.