Richard Stobbe (He/Him)Partner, Trademark Agent, CLP Overview Experience Professional Recognition Community News + Views + Events Media Client Stories Notable Work Richard Stobbe is an intellectual property lawyer, Trademark Agent and Certified Licensing Professional (CLP), helping corporations and individuals throughout Alberta with a practical and solutions-oriented approach. Many of his clients are mid-sized software vendors, company founders and owner-operators who value Richard's responsive, cut-to-the-chase approach to problem solving. He is also called in to flag and resolve issues for corporate transactions involving intellectual property (IP) assets.
Richard works with tech companies involved with oil and gas services, fintech, remote data collection, IoT, artificial intelligence (AI) engines, agriculture, insurance and university-based tech transfer. He has years of experience handling sophisticated business issues involving the full spectrum of IP concerns, including:
- IP licensing
- Franchise law
- Software licensing and escrow
- IP due diligence
- Technology transfer and patent licensing
- Cloud-computing and Software-as-a-Service (SaaS)
- Blockchain and distributed ledger technology (DLT), smart contracts, consortium agreements for private or permission-based ledgers, consortium governance policies, and participant agreements
- Trademark prosecution and dispute resolution
- Domain name law
- Internet law
- Internet-of-things (IoT), data security, and cyber-liability risk assessments
- E-commerce law
- Online Terms & Conditions, and “click-through” agreements
- Privacy law
- Privacy issues related to drone and unmanned aerial vehicles (UAV)
- Data ownership legal issues
Richard has been a course instructor in intellectual property law for the Masters of Biotechnology class at the University of Calgary and for the Bissett School of Business at Mount Royal University and has been a guest lecturer at the University of British Columbia Faculty of Law in Vancouver. Richard has taught business law at the Southern Alberta Institute of Technology and "Internet Law and New Media" at the University of British Columbia and has also instructed the course "Internet Law - The Law and New Media" at the British Columbia Institute of Technology.
Value to Clients
"My role is to help my clients make better decisions at critical points in their business life. Information is cheap but clear analysis and customized advice is invaluable."
Outside the Office
"In the winter, I'm with my family on the ski-hill as often as possible. In the summer, we hike, canoe and spend time in the backcountry of Alberta." Canadian Technology Law Association Director 2019 - 2022 Canadian Technology Law Association Member 2016-Present Intellectual Property Institute of Canada (IPIC) Member 2012 - 2019 Law Society of Alberta Member 2005-Present Licensing Executives Society, Calgary Chapter Member 2005 - 2019 Law Society of British Columbia Member 1999-Present Canadian Bar Association, Intellectual Property Section Executive 2012-2017 Licensing Executives Society, Calgary Chapter Chair 2006-2014 Canadian Bar Association, Intellectual Property Section Member Listed Intellectual Property Law The Best Lawyers™ in Canada 2023 Listed Privacy + Data Security Law The Best Lawyers™ in Canada 2021 - 2023 Readers' Choice Top Author, Trademarks JD Supra 2017, 2019 Law Society of British Columbia Legal Support 2001 - 2002 Canadian Bar Association British Columbia Legal Support 2001 - 2002 Law Society of British Columbia Pro Bono Legal Support 2001 - 2002 Canadian Bar Association British Columbia Pro Bono Legal Support 2001 - 2002 University of Calgary, Master of Biotechnology Guest Lecturer University of British Columbia, Faculty of Law Research Assistant 1997 - 1998 October 27, 2022 An Employer's Guide to Hybrid Work Arrangements
Workshop Employers have been navigating the COVID-19 pandemic longer than we anticipated, creating unforeseen challenges for management and human resources departments. As the dust continues to settle, many employers are moving to implement fully remote or... August 2022 - 3 min read The Artificial Intelligence and Data Act… Coming Soon to AI Near You In June 2022, the Government introduced Bill C-27, an Act to enact the Consumer Privacy Protection Act, the Personal Information and Data Protection Tribunal Act, and the Artificial Intelligence and Data Act. A major component of this propose... April 7, 2022 Coffee + Counsel: Employer Considerations for the Removal of Vaccination Policies Q+A Session Join us for another edition of Coffee + Counsel, a complimentary series that brings you together with a few of our lawyers for an unscripted chat about legal issues pertinent to organizations in Alberta. Your questions guide the discussion, and we prov... January 2022 Meet Our Newest Partners Field Law welcomes Jill Bishop and Richard Stobbe to its partnership.Field Law is pleased to welcome Jill Bishop and Richard Stobbe as firm partners, starting January 1, 2022.“Both Richard and Jill have demonstrated leadership and commitment to e... June 21, 2021 Harassment, Discrimination + Violence in the Workplace: Legal Considerations for ASBA Members Q+A Session May 13, 2021 Coffee + Counsel: How to Protect Your Business Against Phishing Attacks
Q+A Session Join us for another edition of Coffee + Counsel, a complimentary series that brings you together with a few of our lawyers for an unscripted chat about legal issues pertinent to organizations in Alberta. Your questions guide the discussion, and we prov... May 5, 2021 The Modernization of Canadian Privacy Law: Where Are We Heading? Seminars Individuals and organizations, both large and small, are increasingly faced with challenging issues in the area of privacy and information handling. Bill C-11, the Digital Charter Implementation Act, 2020, seeks to modernize Canadian privacy legis... March 2021 - 4 min read Facial Recognition: A Privacy Law Perspective Humans love to look at faces – our families, our friends, complete strangers. In some ways, our brains are optimized for facial identity recognition. We’re good at it, so of course we want to teach machines how to do it even bette... February 2021 - 1 min read Beer Brand Battle at the 100th Meridian A Canadian band, The Tragically Hip, has sued a brewer for the use of a beer name that mimics the title of one of the band’s popular songs.Mill Street Brewery, a brand owned by Anheuser-Busch InBev (the world’s largest brewer), has a beer b... December 3, 2020 Cocktails + Counsel: Setting Your Business Up for Success in Uncertain Times Q+A Session Join Field Law for another edition of Cocktails + Counsel, this time co-presented with PARK. This complimentary series brings you together with a few of our lawyers for an unscripted chat about legal issues pertinent to local business owners in th... November 3, 2020 2020 CAN-TECH LAW Annual Conference Conferences Moderator Corporate Counsel: Managing Large Technology Transformation Projects in Uncertain Times October 2020 - 6 min read Major Win for York on Copyright: York University v. Access Copyright Case Review Update: On October 15, 2020 the Supreme Court of Canada (SCC) granted the applications for leave to appeal. The judgment of the Federal Court of Appeal, in York University v. The Canadian Copyright Licensing Agency (“Access Copyright”), Num... May 2020 - 5 min read Returning to Campus During a Pandemic: Privacy Issues This week, as this article went to press, several major Canadian and American universities announced plans to maintain classes online when the fall semester starts in September. Other universities and colleges are making plans to bring students ba... April 2020 Will the Pandemic Impact Trademarks in Canada? - An Update With the significant disruptions to civil society, Canadian business owners face a host of immediate concerns. Trademarks and intellectual property are naturally lower on the list, and brand owners should take some comfort that there’s a bit of b... April 2020 Signing Contracts in a Distanced World When many people think of signing a contract, the traditional picture is a meeting, a pen and paper, and handshakes at the end. With current social and physical distancing protocols in place, all of these traditional images are jarring. Now, every... March 31, 2020 COVID-19: Force Majeure Clauses in Business Agreements Webinar Learn about force majeure clauses, and why context is important in interpreting how it might apply to your commercial contracts. Presented by Cameron Hughes and Richard Stobbe, this webinar will review the concept of “frustration” of contra... March 2020 Patent Issues under Canada’s COVID-19 Emergency Response Act The Federal Government’s COVID-19 Emergency Response Act contains certain amendments to the Patent Act that permit the Federal Government to authorize anyone to “make, construct, use and sell a patented invention to the extent necessar... March 2020 - 4 min The Force Majeure Hit List – 7 Things You Need to Know The COVID-19 Pandemic has unprecedented and wide-spread impact on commercial obligations. Many business relationships are being disrupted or suspended, and many business deals are delayed or completely cancelled. The global lock-down has... March 2020 Copyright is Great… But it Has its Limits Proline Pipe, an Alberta company, created certain design drawings for pipe bending machines. A former employee took those drawings with him when he left the company. A rival company obtained copies of the drawings and manufactured the pipe bending mach... February 2020 Big Beer Barley Belt Brand Battle Brews In a story that seems tailor made for alliterative headlines, the recent acquisition of Calgary’s Banded Peak Brewing by Labatt Breweries of Canada has raised questions about the fate of the trademark BARLEY BELT. Banded Peak Brewing a... January 2020 Click-Through Agreements IP Blog December 2019 2019 Field Law Post-Secondary Summit Recap The fourth annual Field Law Post-Secondary Summit was held on November 28 in Calgary and was co-chaired by Frank Molnar, QC and Greg Harding, QC. Brief summaries of the presentations given at the Summit are provided below.
Innovative Governance During... December 2019 Another Case of Beer: Small Craft Brewers + Constitutional Battles It seems a long way from Alberta’s basement breweries to the halls of the Court of Appeal. But that line was connected in a long running dispute known as Steam Whistle Brewing Inc. v AGLC. With enough reading to make any constitutiona... May 2019 Craft Beer Trademarks: The Ol’ Cease & Desist Local Alberta breweries Elite Brewing (visited, love the carbon fibre bar) and Bow River Brewing have been on the receiving end of a cease and desist letter from the City of Calgary over a beer label for Fort Cal... May 2019 Shotguns & Shareholders: A Practical Review of Shareholders' Agreements for Start up Companies Presentations Innovate Calgary March 6, 2019 Beer®: Trademark Protection & Legal Quality Control for the Long Haul Presentations Alberta Craft Brewing Convention February 12, 2019 Exploring the Legal Aspects of Smart Contracts and Their Role in Blockchain Presentations Blockchain in Oil + Gas Canada 2019 December 2018 Pour a Glass of Trademarks In time for the holidays, this is a tale of competing brands sloshing around the marketplace. Please enjoy responsibly.
Diageo North America, Inc. is purveyor of some of the world’s best-known brands of spirits and beer, some of which are probab... November 2018 Case Summary: Copytrack Pte Ltd. v Wall Defence + Indemnity A British Columbia court has come out with one of the first Canadian decisions directly addressing the enforcement of rights to ownership of cryptocurrency. Copytrack Pte Ltd. v Wall, 2018 BCSC 1709, per Skolrood, J.FACTS AND ISSUES:Copytrac... October 2018 #Hashmarks: Can a Hashtag be a Trademark? The Medium Through its automatic web of connections, the humble hashtag has been repurposed: it’s now associated with the cachet of internet fame. In social media platforms the hashtag brings users from one descriptor to thousands of associated result... October 2018 How do “Smart Contracts” Fit With “Traditional Contracts”? The Medium Placing Smart Contracts in Context A “smart contract” is really a set of computer programs designed to automatically execute certain transaction steps, provided certain conditions are met. It’s not so much a contract, in th... September 25, 2018 Energy.AI Workshop
Energy Futures Lab and JWN September 19, 2018 Blockchain and Smart Contracts Presentations PASC Education Day 2018 August 2018 Flippin' to the B-Side Craft Beer Trademarks In 2015, an Ontario craft brewer, Beau’s All Natural Brewing Company (Beau’s) applied for a trademark for B-SIDE BREWING LABEL, for use in association with Ontario craft beers. The “B-Side Brewing Label” is an innovative promoti... June 25, 2018 Surveillance Machines: Privacy Implications of Drones, UAVs and Driverless Vehicles Presentations Canadian Bar Association June 2018 Smart Contracts (Part 2): Intermediaries? We Don’t Need No Stinkin’ Intermediaries! IP Blog In Part 1 (Can Smart Contracts Really be Smart?), we looked at smart contracts, and how “smart” they really are – if you need some background, start there.Smart contracts (or “programmatically executed transactions”) ... June 2018 Smart Contracts as Programmatically Executable Transactions and Blockchain Presentations BLOCKCHAIN for Energy - Learnings from Oil and Gas Industry Applications May 2018 Can Smart Contracts Really be Smart? The Medium “We are in the midst of a revolution – a revolution in the technology of storing, processing, and communicating information… [which] has brought about profound changes in business, political, and social institutions.”This quote... February 2018 The Google vs. Equustek Decision: What comes next? The Medium The internet is borderless, right? So how does one country balance the rights of internet users within its own borders? And can a Canadian court reach across an international border to control the online conduct of an American company? The case of... February 2018 Goodbye Floppy Disk, Hello Streaming Video: Trademark Evolution, Part 2 The Medium Technology certainly evolves. Can a trademark do the same?In the world of intellectual property rights, a registered trademark can live on for a hundred years or more. If you registered a trademark in the 1800s, it could still be valid today. But will ... January 2018 The Blockchain Patent Gold Rush The blockchain technology underlying BitCoin and other cryptocurrencies was originally designed and conceived as an open protocol that would not be owned by any one centralized entity, whether government or private. Just like other foundational pr... June 2017 US Drone Registry is Shot Down IP Blog In response to the proliferation of recreational drones in American skies, the Federal Aviation Administration (FAA) introduced a rule known as the “Registration Rule” in 2015. The rule required drone owners to register their drones with th... June 2017 Copyright in Seismic Data is Confirmed IP Blog In a decision last year, GSI (Geophysical Service Incorporated) sued to win control over seismic data that it claimed to own. GSI used copyright principles to argue that by creating databases of seismic data, it was the proper owner of the copyright in... June 2017 “I googled it”: Generic Words and Trademark Rights The Medium A registered trademark can suffer "genericide" if it becomes so commonly used that it transforms from a unique brand name into a generic word which is synonymous with a product or service. In a very interesting decision from the U... June 2017 Non-Competition Clauses: Enforceable or Just for Show? The Medium When can a non-competition clause actually stop someone from working? Or are these clauses just for show?
Let's take a look at a couple of cases involving departing employees who find themselves in hot water with a former employer.
... May 2017 Copyright Infringement on a Website: the risks of scraping and framing IP Blog If photos are available on the internet, then… they’re free for the taking, right?Wait, that’s not how copyright law works? In the world of copyright, each original image theoretically has an “author” who created the imag... April 2017 Defamation with the Click of a Mouse: Assessing Damages In the midst of a challenging period for a condominium owners association in a property located in Costa Rica, the president of the association resigned in frustration. Someone had overheard a rumour that the president resigned because he had been accu... April 2017 Patent Infringement for Listing on eBay? A patent owner notices that knock-off products are listed for sale on eBay. The knock-offs appear to infringe his patent. When eBay refuses to remove the allegedly infringing articles. The patent owner sues eBay for patent infringement, claiming that e... March 2017 Canadian Copyright & Breach of Technological Protection Measures (TPMs): $12.7 million in Damages It’s always exciting when there’s a new decision about an obscure 5-year old subsection of the Copyright Act! Back in 2012, Canada changed its Copyright Act to try and drag it into the 21st century. Among the 2012 changes were provisions to... March 2017 Interim Canadian Drone Rules Launched As the recreational and commercial use of drones expands, the calls for a regulatory framework have grown louder. The Canadian federal government has, until last week, taken the simple approach of prohibiting the use of UAVs: “No person shall ope... March 2017 Experimental Use of an Invention Inventors must take care that their invention is “new” for it to be patentable. That means the invention hasn’t been disclosed to the public. Trade show announcements, press releases, publications, offering the invention for sale &nda... February 2017 Another Canadian Decision Reaches Outside Canada This fascinating Ontario case deals with an Alberta-based individual who complained of certain material that was re-published on the website Globe24h.com based in Romania. The server that hosted the website was located in Romania. The material in quest... February 2017 VCC vs. VCC: Where's the Confusion? When we’re talking about trademarks, at which point do we measure whether there is confusion in the mind of the consumer?We reviewed this issue in 2015 (See: No copyright or trademark protection for metatags). In that earlier decision, Vancouver ... September 2016 Ownership of Copyright in Software Can an employee claim to own the employer’s software?An “author” of a work is the first owner of copyright. To determine ownership, it’s necessary to determine which contributions will be considered “authors... September 2016 The Wild West: Drone Laws and Privacy in Canada ‘Drones’ were first known by the military as unmanned aerial vehicles, and later by the International Civil Aviation Organization as remotely piloted aircraft systems. Drones come in various shapes and sizes and can be p... July 2016 A Binding "Clickwrap Agreement" From Paper? Consumers and businesses routinely enter into binding contracts by means of both paper agreements and online “click-through” agreements. But what happens when you face a “hybrid” contract? Can a binding contract b... March 2016 Competing After Employment (Part Two) The Medium Last summer, Jawbone, a fitness tracking hardware and software maker, sued its arch-rival Fitbit (CNET, 2015) alleging that Fitbit lured its employees away to obtain access to Jawbone’s confidential information and produc... September 2015 Forum Selection in Online Terms IP Blog Let’s say you’re a Canadian company doing business with a US supplier – which law should govern the contract? ‘Forum selection’ and ‘governing law’ refer to the practice of choosing the applicable law and venue... August 2015 No Copyright or Trademark Protection for Metatags IP Blog What if a competitor copied the metatags on your website and you watched web traffic bleed from your own site while the competitor’s site enjoyed a bump in hits? Are metatags subject to copyright or trademark protection? The recent Federal Court ... April 2015 Competing After Employment (Part One) The Medium A key employee departs. The employer, worried that confidential information has leaked out of the company, scrambles to respond. After a frenzied period of preparation, the employer starts a lawsuit and seeks an injunction against t... Publisher of ipblog.ca, the first Calgary-based law-blog to focus on intellectual property law, trade-marks and internet law in Canada, October 2006 - present. Interviewed by Maclean’s magazine on the topic of online defamation. (May, 2009) Interviewed by Montreal Gazette (January, 2008) on the topic of copyright and digital rights management. Interviewed by Oilweek Magazine (January 2007) on the subject of IP licensing. National Post interview on the plan to fast-track cleantech patent applications. Helping clients move their negotiations forward
- An Alberta-based software vendor had developed a proprietary product that it was ready to take to market with their first big customer. The software vendor turned to Richard when they faced negotiations involving complex contractual issues with which they didn't have first-hand experience. "They felt as though their reputation was at stake and they were losing control of the negotiation process," as Richard described it. "Issues such as software escrow, IP indemnities and limitations of liability - these issues took on additional importance for this client in light of the size of the deal. The stakes were higher. So, we unpacked the issues one at a time, got them through the process under some intense time and budget pressures, signed the deal and helped them move onto implementation."
Negotiating complex deals for clients
- Richard was brought in to handle IP due diligence when the founders of an Alberta-based software client were negotiating the sale of the company’s assets to a much bigger U.S. company. A smaller firm was initially engaged to assist with the main contract negotiations. However, when it became clear that the deal was becoming much more complex, the smaller firm turned to Richard to take on the whole transaction. "We took over as lead counsel as the deal evolved. I assisted the client through a long and complicated asset purchase agreement, one with a few cross-border twists. The deal involved terms of payment after closing, residual risks and complex representations and warranties about what the vendors were able to promise about the assets they were selling. Of course, there was a tight closing deadline. It was a big plus for me to have deep, expert help within Field Law. When you’re negotiating across from U.S. counsel, it’s nice to stand shoulder-to-shoulder with your colleagues who have securities, corporate and employment law expertise. It’s this bench-strength that clients are looking for when they are negotiating the biggest deal of their lives."
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Trademark counsel for Alberta craft brewery, craft cidery and craft distillery clients
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Acting as IP counsel for the vendor in the purchase and sale of shares of a software company for proceeds of $25 million
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Acting as counsel for Alberta-based drone services and analytics company
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Acting as counsel for vendors in the purchase and sale of shares of an Alberta-based cloud-computing (software-as-a-service) company
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Acted as counsel for the vendor in the purchase and sale of shares of a cloud-computing (software-as-a-service) company
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Acted as counsel for health services company in its acquisition by a public company for aggregate consideration of up to $215 million, including the sale of intellectual property to the purchaser for an aggregate purchase price of $55 million in cash
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Acted as counsel for the borrower in connection with $90 million credit facility including preparation and drafting of closing documents, credit agreement and subsidiary guarantees and security
- Acted for multinational oil company in preparation and drafting of closing documents in connection with $45 million amended credit agreement and subsidiary guarantees
- Preparation and drafting of documents for $15 million investment in manufacturing company by way of issuance of series of secured debentures
- Conducted due diligence review, acting for syndicate of venture capitalists and other private investors in $14.5 million equity financing of biotechnology company, drafting and negotiating shareholder and share subscription agreements
- Acted in acquisition and financing of $5.6 million fibre-optic network, and drafting related agreements, including indefeasible rights of use agreements
- Licensing and protection of intellectual property (IP) rights, including software licensing, trade-mark licensing, licensing of mobile applications, patent licensing and assignments of IP rights
- Advised multinational company on IT outsourcing, including software licensing, customization, technical support agreement and IT services agreement
- Acted in negotiation and settlement of disputes regarding ownership of IP rights
- Negotiated the settlement of domain name disputes including drafting domain name transfer agreements, and arbitration claims pursuant to dispute resolution procedures
- Acted for university tech-transfer office in connection with out-bound licensing of intellectual property rights
- Acted for internet-based software service providers in licensing of technology
- Assisted client with preparation of national franchise agreements and disclosure documents
- Trade-mark protection strategies, licensing, assignments and transfers, trade-mark prosecution and re-branding projects for companies with worldwide operations
- Advising on website development agreements, online contracting and e-commerce agreements
- Establishing security in connection with various transactions, including inventory financing, purchase and sale of real estate, inter-company loans
- Preparing and advising on OEM, manufacturing and distribution agreements
- Drafting and advising on multi-party joint venture agreements
- Acting for companies and shareholders in the negotiation and drafting of shareholders agreements and share subscription agreements
- Acting for purchasers / vendors in purchase and sale of business assets and shares, including drafting and negotiation of purchase agreements, conducting due diligence, reviewing and preparing financing documents, obtaining security
Education Certified Licensing Professionals, Inc., 2014, Certified Licensing Professional Canada, 2001, Registered Trade-Mark Agent University of British Columbia, 1998, Bachelor of Laws University of Waterloo, 1994, Bachelor of Arts With Honours Osgoode Hall Law School of York University, May 2021, The Osgoode Certificate in Privacy Law and Cybersecurity Admissions Alberta,2005 British Columbia,1999 |
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