Bernice Karn* is a leading lawyer in the areas of information technology (IT), licensing and privacy law and a partner in our Toronto office. She is ranked as one of Canada's top IT lawyers by the world's foremost ranking publications, including Chambers Global (IT) and Legal Media Group's Guide to the World's Leading Technology, and Media & Telecommunications Lawyers (IT).
Extensive IT and IP Expertise
For over 25 years, Bernice's expertise in IT law has benefitted clients from a range of industries, including major retailers, e-commerce companies, hospitals, universities and major Canadian financial institutions. She has significant experience in outsourcing matters and regularly advises clients on the acquisition and disposition of IT assets and intellectual property (IP) rights. She is extremely knowledgeable in the area of IT-related agreements and has deftly crafted master services, joint venture, development, license, escrow, consulting and cloud computing/SaaS agreements for her clients. Bernice's strong background in IP complements her IT practice as she provides in-depth counsel on trade-marks prosecution, copyright licensing, rights clearances, marketing and advertising law, as well as social media campaigns.
Through her numerous mandates in IT and outsourcing matters for financial institutions, Bernice has developed a strong understanding of the regulatory framework within which financial institutions must conduct outsourcing business. She applies this expertise in her work with banks, insurance companies and their service providers, as well as mortgage administration companies.
Bernice also advises on all aspects of procurement procedures and Canadian laws of competitive bidding. Her involvement ranges from assisting clients with competitive request for proposals and multiple vendor negotiations to sourcing partnerships.
In addition, Bernice is a certified licensing professional and a member of the payments team at Cassels Brock.
Notable Privacy/Data Security Proficiency
Bernice's practice also includes advising on privacy laws and data security, a growing area of concern for most companies, as more and more rely on IT-driven solutions. She advises clients on private and public sector privacy and data protection laws and emerging developments, such as Canada's anti-spam legislation.
Bernice has assisted clients in developing and implementing policies and compliance procedures for handling and safeguarding personal and company information, maintaining and transferring customer and employee information, and regulating data transfers with third parties. She regularly conducts privacy assessments and information security policy audits and, when needed, can use her skilled expertise in this area to assist clients in handling and responding to data security incidents.
Recognized IT Expert
Bernice has been recognized by publications worldwide for her expertise in IT and privacy law. She is ranked by Chambers Global for her work in IT. Chambers notes: "sources highlight her significant in-house background as a strong asset," while clients say "I wouldn't hesitate to recommend her." Bernice is also ranked in the Legal Media Group's Guide to the World's Leading Technology, Media & Telecommunications Lawyers (IT) as well as their Guide to the Leading Women in Business Law; in addition, Bernice was selected as a finalist by Euromoney's Women in Business Law for "Best in Media & Entertainment (2013)."
Related IT-Related Transactional Experience
· Advising a major Canadian retailer on master services agreements for code development and system integration
· Negotiating master consulting agreements with major IT consulting vendors on behalf of significant Canadian retailer
· Advising a Canadian bank on credit card production agreements, statement production and processing agreements, and payment processing agreements
· Advising "super computer" manufacturers
· Advising a Canadian university on several satellite launch projects
· Advising a major Canadian retailer on IP aspects of private label insurance products
· Advising a Canadian university on building of hi-performance computing centre and acquisition of hi-performance "super computers"
· Advising a Canadian university on several "Massively Open Online Course" agreements
· Advising several Canadian universities on SaaS agreements for email services with major IT vendor
· Providing legal advice on matters related to cloud-based mortgage administration systems
* denotes Professional Corporation
· Certified Licensing Professional
· Chambers Global 2012-2013 (Information Technology)
· The 2010 Legal Media Group Guide to the World's Leading Technology, Media & Telecommunications Lawyers (Information Technology)
· The 2010 Legal Media Group Guide to the Leading Women in Business Law (Technology, Media and Telecommunications)
· American Bar Association
· Canadian Bar Association
· IT-Canada (Director)
· Licensing Executives' Society (Internet and E-commerce Committee)
· Ontario Bar Association
· Toronto Computer Lawyers Group
Publications, Newsletters and Articles
IT Due Diligence in M&A Transactions: Scoping Out a Thorough Review of a Target's IT Assets (Trending2013: An M&A Series)
Negotiating IT Contracts - 10 Things You Should Consider (CBB Corporate Counsel Insights Series)
10 Things About Canada's New Anti-Spam Law (CBB Corporate Counsel Insights Video Series)
Canadian Anti-Spam Legislation One Step Closer to Being Proclaimed in Force
The Cassels Brock Report - October 2012
Open Source Hardware - A New Manufacturing Paradigm?
While CASL in Limbo, CRTC Gears Up With Guidelines
While CASL in Limbo, CRTC Gears Up With Guidelines
The Cassels Brock Report - July 2012
The Cassels Brock Report - April 2012
Canada's Anti-Spam Legislation - Potential Delay?
The Cassels Brock Report - February 2012
"Intrusion Upon Seclusion" - The Tort Whose Time has Come?
License Plates Numbers Are Not "Personal Information" Under Alberta's Privacy Laws
The Cassels Brock Report - November 2011
Supreme Court Clarifies Role of Hyperlinks in Defamation Case
Restructuring and Insolvency Group e-COMMUNIQUE - October 2009
The Insolvent Licensor - New Canadian Laws Provide Some Protection For Licensees of Intellectual Property
Conferences, Speaking Engagements, Events
Bernice Karn Presents "Managing Privacy and Data Security Risks in Emerging Payments Markets" in Washington, D.C.
Bernice Karn a Panellist on "Current and Proposed Laws Governing Mobile Payments"
Bernice Karn Presents "The Art of Self-Promotion for Female Lawyers"
Bernice Karn Presents "Canada's New Anti-Spam Law: Are You in Compliance?"
Bernice Karn and Brian Koscak Discuss "What Does the Future Hold for Entrepreneurs to Raise Capital using Crowd Sourcing?"
5th Managing Privacy Compliance Conference
Issues of Confidentiality, Privacy and Security: 2012 OBA Annual Institute
Don't Send that Email! - What Canada's New Anti-Spam Legislation Means for You