Background
Eric Boehm is a partner at our Toronto office in the Corporate Commercial Group focusing on technology law. He is ranked by several publications as one of Canada's top technology lawyers. He has considerable international expertise and has practised in Toronto and at an international law firm in Paris, France. He is fluent in French.
Eric was admitted to the Ontario Bar in 1998. He earned his LLB from the University of British Columbia in 1996 after completing an exchange semester at Université Jean-Moulin Lyon-III. Prior to that, he received a Joint Honours degree in Philosophy and Political Science from McGill University.
Areas of Practice
Extensive Canadian and international experience advising on complex commercial transactions, including technology and business process outsourcings, joint ventures, mergers, acquisitions and other strategic relationships.
Significant expertise in financial services, intellectual property, e-commerce, online services, privacy, open source software, trade-mark and patent licensing, manufacturing, export controls and consumer protection issues.
Ranking and Recognitions
· Recognized in the 2012 edition of Chambers Global - The World's Leading Lawyers for Business (Information Technology - Up and Coming)
· Recognized in the 2011 edition of IAM Licensing 250 - The World's Leading Patent & Technology Licensing Lawyers
· Recognized in Who's Who Legal: Canada 2010 (Internet and e-Commerce)
· Lexpert® Zenith Pro Bono award (2010)
· The Globe & Mail Business for the Arts Award (2008)
Professional Experience
· Outsourcing: Represents financial institutions, telecommunications providers and major media companies in the procurement and negotiation of some of the largest outsourcing transactions in Canada.
· Other Commercial and Technology Transactions: Negotiates international supply, export and manufacturing arrangements, including relating to smart cards, green technology and the automotive industry, and notably involving service providers and suppliers in India, China and Latin America.
· Intellectual Property: Advises clients on licensing of software, patents and trade-marks; counsels clients on introduction and exploitation of new products and services, including in the areas of business intelligence, green technology and cloud computing.
Recently represented the following clients as lead counsel:
· The Beer Store in a long-term year, multi-million dollar outsourcing contract with CGI for the IT infrastructure for The Beer Store and its affiliates and distribution centres
· The Bank of Nova Scotia in the negotiation of a sponsorship agreement with the Calgary Flames for the branding of the Scotiabank Saddledome
· a Canadian chartered bank on various offshore outsourcing arrangements for information systems, application support and maintenance, and call centre operations
· The Beer Store in the procurement of a multi-million dollar customized robotic inventory management system for its primary western Canada distribution centre
· a business process outsourcing provider in its seven year agreement for credit card services for a major chartered bank
· a leading smart card manufacturer in its manufacturing, distribution and development agreements with suppliers in China, Malaysia and Mexico
· Scotia Capital in various agreements relating to the development of a new fixed income market platform
· an international manufacturer in facilities management and intermodal transport logistics services agreements
· Rogers Communications Inc. as co-counsel in all facets of the drafting and negotiation of its competitive procurement for a seven-year contract for transformative datacentre technology services
· The Bank of Nova Scotia in an agreement with The Western Union Company for the offering of money-transfer services to Scotiabank customers in Canada
· Thomson Reuters, The Globe and Mail and Carswell in various publication, manufacturing and technology services agreements
· several foreign banks in various technology agreements in connection with the launch of operations and branches in Canada
· a subsidiary of a major Canadian bank in its acquisition of private label credit card portfolios, and the launch of several private label credit and loyalty card programs
· a national insurance company in a white label insurance distribution agreement
· Canada Pension Plan Investment Board in its outsourcing agreement with IBM Canada for IBM to assume responsibility for the management, operation, support and maintenance of CPPIB's technology infrastructure
· a major Canadian-based gold mining and exploration company in software development and integration projects and intellectual property licenses
· a major Canadian department store in its agreements for business intelligence software and transformational IT projects
Professional and Community Activities
Eric is past chair of the Information Technology/e-Commerce Section of the Ontario Bar Association, and chair of the Student Writing Competition, Canadian IT Law Association. He is also member of the ITech Law Association, Toronto Computer Lawyers Group, Licensing Executives Society and l'Association des juristes d ' expression française de l ' Ontario.
Eric takes part in numerous pro bono activities for World Wildlife Fund-Canada, Earth Rangers, Me to We and Right to Play. He is the founder and original director of the Visual Artists' Legal Clinic of Ontario (offering pro bono legal services clinic for artists).
Eric is a registered Canadian Trade-mark Agent.
Publications and Speaking Engagements
· "Key Issues in Information Technology Contracting: A Roundtable Discussion", OBA Institute 2012, February 9, 2012
· "Trends in Technology Licensing Models", 15th Annual Canadian IT Law Association, October 28, 2011
· "Boilerplate Clauses in Technology Contracts", presentation to Ontario Government Corporate Commercial Lawyers Practice Group, September 9, 2011
· "The End of the Affair? - Term, Renewal and Termination in Technology Contracts", Canadian Technology Law Association 2011 Spring Update, May 28, 2011
· "Optimizing Your Business with Emerging Technology", IDC Canada Roundtable, May 17, 2011
· "Cloud Computing", presentation to Ontario Government e-Lawyers Practice Group, May 13, 2011
· "What Every Lawyer Should Know About Technology Contracts", Ontario Bar Association Institute 2011, January 28, 2011
· "Web 2.0 Risks and Rewards for IP Online", Intellectual Property Institute of Canada Annual Meeting, October 15, 2010
· "Canada Proposes Major Changes to Copyright Law", IPFrontline, June 16, 2010
· "Open Source Software and Creative Commons Licenses: Practical Applications", 2010 Spring Training Program, Canadian IT Law Association, May 27, 2010
· "Preparing a Domain Name Arbitration Complaint", OBA Information Technology & E-Commerce Section presentation, May 5, 2010
· "Art in the Age of Electronic Reproduction: Copyright Issues", Ontario College of Art and Design, December 5, 2009
· "Best Practices in IP Due Diligence", Canadian Institute Forum on Commercializing Intellectual Property, December 2, 2009
· "Mitigating Insolvency Risks in IP", Intellectual Property Institute of Canada webinar, October 29, 2009
· "Helping Clients Handle Disappearing Vendors", The Lawyers Weekly, vol. 29, no. 7, June 19, 2009
· "OSFI Revises Outsourcing Guideline B-10 for Federally Regulated Institutions in Canada", Ultimate Corporate Counsel Guide, no. 28, April 2009
· "Fundamentals of Web Site Terms and Conditions", Information Technology & E-Commerce: Breakfast Basics presentation, January 21, 2009
· "Significant and Controversial Proposed Amendments to Canadian Copyright Act", Intellectual Property Bulletin, June 18, 2008
· "An Open Source Community Divided: Is GPLv3 a Blind Alley or a Path to the Future?", Internet & E-Commerce Law in Canada, BNA, November 2008 (reprint, with updates from article published in Ontario Bar Association IT & E-Commerce Section Quarterly, vol. 9, no. 2 May 2008)
· "Open Source Licensing Suits Settle in Short Order", The Lawyers Weekly, May 30, 2008
· "Joint Development Agreements", 2008 Spring Training Program, Canadian IT Law Association, May 1, 2008
· "The Fundamentals of Web Site Development Agreements", OBA Information Technology & E-Commerce Section, May 1, 2008
· "Taking Security in Intellectual Property and Software: Not a Security Blanket", Toronto Computer Lawyers' Group presentation, Toronto, April 17, 2008
· "Conducting E-Commerce with User Generated Content", Intellectual Property Institute of Canada 42nd Spring Meeting, Québec, April 14, 2008
· "Drafting and Enforcing IP Royalty Audits", Licensing Executive Society Toronto Chapter presentation, Toronto, March 27, 2008
· "Caution Needed in Operating 'Blawgs'", Lawyers Weekly, June 1, 2007
· "Financial Institution Business Continuity Planning: The New Legal and Regulatory Requirements", Federated Press presentation, Toronto, February 12, 2007