Richard Stobbe
Richard Stobbe
Lawyer, Trademark Agent, CLP
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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
  • 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
  • Franchise law
  • 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)

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 IT Law Association
Member
2016 - Present
Intellectual Property Institute of Canada (IPIC)
Member
2012-Present
Law Society of Alberta
Member
2005-Present
Licensing Executives Society, Calgary Chapter
Member
2005-Present
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
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
University of British Columbia, Faculty of Law
Research Assistant
1997 - 1998
University of Calgary, Master of Biotechnology
Guest Lecturer
Law Society of British Columbia
Pro Bono Legal Support
2001 - 2002
Canadian Bar Association British Columbia
Pro Bono Legal Support
2001 - 2002
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:Copytrack Pte Ltd. (...
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 ContextA “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 the legal sens...
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!
JD Supra
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...
April 3, 2018
Blockchain Hype, Myths and Today’s Practical Applications
Presentations
Evening Pubinar Series (IAIA-WNC Southern Alberta)
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
JD Supra
June 2017
US Drone Registry is Shot Down
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
By Richard Stobbe 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 o...
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
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?
By Richard Stobbe 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 infringemen...
March 2017
Canadian Copyright & Breach of Technological Protection Measures (TPMs): $12.7 million in Damages
By Richard Stobbe 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 provisi...
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?
. By Richard Stobbe 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 decis...
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...
February 2016
What Happens When a Franchise Agreement Ends - Part Three: Rescission
In our previous posts, we reviewed restrictive covenants and cancellation rights under franchise laws. In a recent decision of the Ontario Court of Appeal, the dispute focused on the right of rescission. As the court put it, the cas...
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
August 2015
No Copyright or Trademark Protection for Metatags
IP Blog
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...
March 2015
What Happens When a Franchise Agreement Ends - Part Two: Cancellation
In some cases, a franchise relationship ends after many years of business. At the point of termination, the parties must wrestle with a number of issues, including customers, inventory, and (as we reviewed in Part 1) the impact of a...
November 2014
Intellectual Asset Management Best Practices – Part 2
The Medium
In Part 1, we looked at three important steps in starting an intellectual asset management process within your organization. “Intellectual assets” can include the know-­how and intellectual capital within your organizatio...
May 2014
Intellectual Asset Management Best Practices - Part 1
The Medium
Does your organization have “intellectual assets”? Regardless of what your organization does – whether it is a service ­based business, or in the manufacturing sector, whether it is driven by cloud-­based software or bric...
May 2014
Forget Me, Google
 Richard was interviewed by CBA National magazine on the subject of a recent EU privacy decision.
February 2014
Franchise Law Series: Part One
A “Pet Valu” franchisee in Ontario claimed that sales were declining, so the owner tried to escape her franchise agreement. After termination of the agreement, her husband established a competing “Pet Stuff” business nearby...
February 2014
Supreme Court on Copyright Infringement and Protection of Ideas
Let’s say you pitch a story idea to a TV production company ­- and not just an idea, but a complete set of storyboards, characters and scripts. You would be surprised if one day you saw that story idea come to life in a TV production tha...
November 2013
Tips and Trends in Online Contracting
The Medium
Wondering if your online contract will hold up? Here’s the good news: online contracts are enforceable in Canada. For a number of years the courts have shown that they will uphold online agreements in the same way as written paper agreements...
October 2013
Keeping Secrets: Trade Secrets and Confidentiality Agreements
If you are a business owner or an entrepreneur, you have probably encountered non­-disclosure agreements or agreements with a similar title: confidentiality agreements, CAs, NDAs or confidential disclosure agreements. These agreements are comm...
June 2013
Software Licenses and Indemnities: What Obligations Are You Taking On?
The Medium
License agreements often contain indemnities. An indemnity is a contractual obligation to step in and reimburse some financial obligation such as a liability, loss, or damage. In essence, the party giving the indemnity will make the injured p...
March 2013
Protection By Design: Industrial Design Law In Canada
The Medium
Bodum – a maker of popular coffee­-press and glass products – wanted to protect their design for a double-­walled drinking glass in a competitive marketplace. Apple wanted to protect the design of their popular handsets like th...
March 2013
Trademark Rights: Across the Border and On the Web
The Medium
Here are three concepts that are not new: trade­marks, borders and the internet. But the courts are still trying to work out how to handle the three when they collide, as they did in the case of HomeAway.com, Inc. v. Hrdlicka. In this interest...
January 2013
Outsourcing by Canadian Companies
Another Look at the USA Patriot Act
“There may be no greater area of confusion and misunderstanding than fear of the PATRIOT Act” ­- Ontario Information and Privacy Commissioner   Cloud computing and data outsourcing has been embraced by many ...
Dec 2012
Click and Copy: Breach of Online License Agreements and Copyright Infringement
April 2012
Intellectual Property Issues in Corporate-Commercial Transactions
The Medium
February 2012
You Can't Have Clouds Without a Little Bit of Lightning: Cloud Computing in 2012
You’ve likely heard the term “cloud computing.” But what is it? And how do you avoid legal lightning strikes? Cloud computing is a service model that enables ubiquitous access to on-demand software services, typica...
Winter 2012
Software Licensing and Development: A Case Study
Harmony Consulting Ltd. v. G.A. Foss Transport Ltd., 2011 FC 340 This recent decision provides a good case study on software development, licensing and copyright issues. This is a lawsuit about copyright in certain software computer pro...
Fall 2011
Canada's New Anti-Spam Legislation: How can it impact your business?
Canada has passed sweeping new anti-spam rules that will impact business marketing and electronic communications. Canada’s new Anti-Spam Law (ASL) encompasses much more than just email. The new law creates an “expre...
September 2011
Intellectual Property in the Digital Age
Richard Stobbe was interviewed by CTV for Intellectual Property in the Digital Age an interesting review of media, privacy, copyright and the concept of “fair dealing”. When you post pictures to Facebook, or other social-media or photo-shar...
Aug 2011
Canadian Trade-Mark Update: .XXX Blocking Process
May 2011
Software Licensing in the Cloud
May 2011
Canada Mulls Registration of Non-Traditional Marks
The Lawyers Weekly interviewed Richard Stobbe for its article "Canada mulls registration of non-traditional marks."  The introduction of motion marks in the Canadian Intellectual Property Office (CIPO) would permit registration of m...
Spring 2011
Tips For Software Licensing in 2011
Software vendors and their customers are changing the traditional distribution models for software licensing in Canada. While this change is by no means new – IT outsourcing, ASPs (Application Service Providers), SaaS (So...
Winter 2011
Executive Compensation: Looking at the Whole Package
You might not think of yourself as an “executive,” but if you run your own business, you’re probably the President and CEO. And if you are helping build a business of any kind – whether a start-up or an establishe...
January 2011
CleanTech in Calgary
November 2010
The Legal Implications of App Development
November 2009
Tips and Trends in CleanTech Licensing

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."
  • Acted as counsel for the vendor in the purchase and sale of shares of a cloud-computing (software-as-a-service) company
  • 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
  • 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
University of British Columbia, 1998, Bachelor of Laws
University of Waterloo, 1994, Bachelor of Arts With Honours
Certified Licensing Professionals, Inc., 2014, Certified Licensing Professional
Canada, 2001, Registered Trade-Mark Agent
Admissions
British Columbia,1999
Alberta,2005