Teresa Scassa - Blog

“The Doctrine of Functionality in Trade-mark Law Post-Kirkbi”, (2007) 21 I.P.J. 87-115.

The doctrine of functionality has long served to prevent the creation of trade-mark monopolies over the functional features of wares. In Kirkbi AG v. Ritvik Holdings Inc., the Supreme Court of Canada emphasized the policy basis for the doctrine which it described as “a logical principle of trade-marks law”.  In this article, the author examines the Kirkbi decision and identifies a number of issues which remain unresolved by the Court’s reasons.  These include the reconciliation of approaches to functionality in earlier court decisions, the role of prior patents, the scope of the doctrine of functionality, issues of utility and ornamentation, and the subject matter to which the doctrine applies.

“Information Privacy in Public Space:  Location Data, Data Protection and the Reasonable Expectation of Privacy”, (2009) 7:2 Canadian Journal of Law and Technology 193-220. PDF available here.

The sheer volume of location data that is now being collected by private sector companies in relation to a wide range of products and services poses serious challenges for privacy and data protection law.  This paper considers a central challenge to privacy posed by the collection and compilation of location data  -- the accessibility of this data to law enforcement agents through exceptions to the general principles of consent for disclosure that exist under private sector data protection legislation in Canada.  Recent court interpretations of these exceptions – primarily in the internet context – paint a muddled picture of their relationship to the right to be free from unreasonable search and seizure under the Canadian Charter of Rights and Freedoms.  This paper considers whether the permissive disclosure provisions of the Personal Information Protection and Electronic Documents Act (PIPEDA) and its substantially similar counterparts mean that law enforcement agents have ready access to information about our movements and activities, or whether s. 8 of the Charter plays a role in limiting the circumstances in which disclosure without notice or consent may take place.

“Intellectual Property and the Licensing of Canadian Government Geospatial Data: An Examination of Geoconnections’ Recommendations for Best Practices and Template Licences”, (2010) 54:3 Canadian Geographer 366-374 (with Elizabeth F. Judge) PDF Available here.

In Canada, Crown copyright permits government to assert control over its works.  These Crown rights have often been justified on the basis that government must assert intellectual property rights so as to be better able to control the accuracy, integrity, and quality of any information that reaches the public through Crown works. In this article, the authors examine GeoConnections’ template agreements for the licensing of government geographic data.  They argue that not only is the basis and scope of claims to intellectual property rights uncertain, the objectives of quality control, data integrity, and accuracy do not appear to motivate the licence terms. The uncertainty as to the legal basis of the intellectual property claims is significant, as licences of this kind may give support to otherwise weak downstream claims by third parties to copyright in data products generated through the use of geographic data provided by the Crown.

“Overbalancing:  The Supreme Court of Canada and the Purpose of Canada’s Copyright Act”, (2010) 25:2 Canadian Intellectual Property Review 181-204

This paper examines how this concept of ‘balance’ evolves in decisions of the Supreme Court of Canada, from the landmark decision in Théberge c. Galerie d’Art du Petit Champlain to the most recent decision in Euro-Excellence Inc. v. Kraft Canada. It offers a critique of the notion of “balancing” as developed by the Supreme Court of Canada.  The paper argues that this “balancing” approach is not supported by the language of the Copryight Act, that it is incoherent as a tool for statutory interpretation, and that it is ultimately inconsistent with the role of the judiciary.  The paper argues that rather than being in opposition to one another, the goals of protecting the rights of creators and encouraging access to and dissemination of works are often served by the same measures.  The paper suggests that the deep divisions at the Supreme Court of Canada in Robertson v. Thompson Corp. and in the Euro-Excellence case illustrate the failings of the Court’s “balancing” approach, and it argues for a more nuanced view of the public policy underlying copyright law.

“The Inadvertent Disclosure of Personal Health Information through Peer-to-peer File Sharing Programs”, in JAMIA 2010 17: 148-158 ( Journal of the American Medical Informatics Association) (with K. El Emam, E. Neri, E. Jonker, M. Sokolova, L. Peyton, & A. Neisa)

There has been a consistent concern about the inadvertent disclosure of personal information on peer-to-peer file sharing networks. Examples of personal health and financial information being exposed have been published. This paper estimates the extent to which personal health information (PHI) is leaking in this way, and compare that to the extent of leakage of personal financial information (PFI). The paper concludes that there is a real risk of PHI leakage on peer-to-peer file sharing networks, although the risk is not as large as for PFI. Custodians of PHI should not install file sharing applications on their computers, and individuals need to be educated about the proper use of file sharing tools to avoid inadvertent disclosure of their, their family’s, their clients’, or patients’ PHI.

“Journalistic Purposes and Private Sector Data Protection Legislation: Blogs, Tweets, and Information Maps” (2010) 35 Queen’s Law J. 733-781

This paper explores how changes in the ways in which information is consumed and disseminated by myriad individuals in myriad forms may impact data protection law in Canada. The author uses examples of blogs, Twitter and information maps to illustrate the problems which will inevitably arise when trying to discern which individuals and which information will properly fit into the journalistic purposes exception in Canadian data protection statutes. She suggests that exceptions for the collection, use or disclosure of personal information for journalistic purposes raise vital questions pertaining to the purpose and scope of these exceptions. Recent case law serves to illustrate the difficulties faced by decision-makers in defining the scope of these exceptions, particularly given the need to balance the public right to be informed with individual privacy rights. The author considers the journalistic purposes exceptions in light of the role of journalists by analyzing how reporters’ privilege cases, defamation law (“responsible journalism”) and ethical codes of conduct might affect and inform current Canadian case law. She compares how journalistic purpose exceptions are configured and applied in Australia and the United Kingdom. In the conclusion, the author considers the direction that data protection law in Canada should take. She suggests that a reasonableness test, which attempts to balance the various conflicting interests, should govern decisions on whether information is being provided for a journalistic purpose or for some “other” purpose.

This paper explores how changes in the ways in which information is consumed and disseminated by myriad individuals in myriad forms may impact data protection law in Canada. The author uses examples of blogs, Twitter and information maps to illustrate the problems which will inevitably arise when trying to discern which individuals and which information will properly fit into the journalistic purposes exception in Canadian data protection statutes. She suggests that exceptions for the collection, use or disclosure of personal information for journalistic purposes raise vital questions pertaining to the purpose and scope of these exceptions. Recent case law serves to illustrate the difficulties faced by decision-makers in defining the scope of these exceptions, particularly given the need to balance the public right to be informed with individual privacy rights. The author considers the journalistic purposes exceptions in light of the role of journalists by analyzing how reporters’ privilege cases, defamation law (“responsible journalism”) and ethical codes of conduct might affect and inform current Canadian case law. She compares how journalistic purpose exceptions are configured and applied in Australia and the United Kingdom. In the conclusion, the author considers the direction that data protection law in Canada should take. She suggests that a reasonableness test, which attempts to balance the various conflicting interests, should govern decisions on whether information is being provided for a journalistic purpose or for some “other” purpose.

“Geographic Information as Personal Information”, (2010) 10:2 Oxford University Commonwealth Law Journal 185-214

The rapid proliferation of applications using geographical information combined with the growing accessibility of vast quantities of data of all kinds has given rise to the mapping of information on an unprecedented scale. Information maps are created by governments, private sector actors, and even by individuals; they may be sole-authored or crowd-sourced. These maps are frequently made available over the internet. Information maps have a serious potential to impact on personal privacy. This paper gives an overview of developments in the mapping of information. It then explores a key question in the data protection context: when is geographical information personal information? Particular challenges in answering this question include the way in which geographical information may be a key to re-identifying de-identified data, and how it can be used to link aggregate geodemographic data to specific individuals.

“Ambush Marketing and the Right of Association: Clamping Down on References To that Big Event with All the Athletes in a Couple of Years”, now published in the Journal of Sport Managemet. PDF available here

“Privacy by the Wayside: The New Information Superhighway, Data Privacy, and the Deployment of Intelligent Transportation Systems”, (2011) 74 University of Saskatchewan Law Review 117-164 (with Jennifer Chandler and Elizabeth F. Judge)

Intelligent Transport Systems (ITS) integrate vehicles and surface transportation infrastructure with information, communication, and sensory technologies to improve the safety, efficiency, security, service, accessibility, environmental responsibility, and reliability of the transportation system. The term ITS covers a very broad range of transport-related activities involving federal, provincial, and municipal governments as well as private sector actors. In its broadest sense, ITS enables an integrated and intelligent network of services for both public and private transportation systems. In this article, we discuss the data protection and privacy issues raised by the use of ITS in Canada.  We begin with an overview identifying the central privacy issues that arise with ITS. We then provide an introduction to the legal and institutional privacy framework in Canada. This is followed by a closer analysis of Canada’s data protection regimes and their application to ITS. 

Dana Ellis, Teresa Scassa & Benoit Séguin, “Framing Ambush Marketing as a Legal Issue: An Olympic Perspective”, (2011) 14:3 Sport Management Review 297-308.

This paper examines the emerging trend of host countries using legislation to protect the Olympic brand and control ambush marketing. More specifically, it will discuss Canada’s Olympic and Paralympic Marks Act in depth. Issues related to framing ambush marketing as a legal issue as opposed to a business issue are examined. The consequences of placing ambush marketing in a legal context are considered from a legal and business management perspective.