Teresa Scassa - Blog

Teresa Scassa

Teresa Scassa

CTV News has reported on a leaked document that suggests that the federal government will be proposing a very specific amendment to the Copyright Act as part of a future budget implementation bill. Specifically, the government will seek to create an exception to copyright infringement that will allow politicians and political parties to make use of media content in political advertisements without the need to seek permission or to pay licensing fees. Normally, the right to authorize the use of copyright protected content is one of the exclusive rights of copyright holders.

The move by the government is sandwiched between two particular events. The first is an announcement in May of this year by major media outlets that they would resist the use of their content in political advertisements. The second, of course, is the looming federal election expected to take place in the fall of 2015 (and for which the campaign already seems to be well under way).

The proposed amendment raises two broad sets of issues. The first relates to process and the second to the substance of the amendment. On the process side of things, the use of budget implementation legislation as a vehicle for ramming through legislative amendments (sometimes of enormous significance) without the normal opportunity for debate, study, and even revision is part of an ongoing degradation of the democratic process in Canada. Copyright reform has always been a lengthy and hotly contested exercise largely because copyright legislation reflects a complex balancing of interests. These interests are diverse, and they include the interests of authors/creators, owners of copyright, industry actors, disseminators of copyright materials, and the broad range of users of copyright protected works. Exceptions to the rights of owners of copyright are generally a key focus of these balancing exercises. The Copyright Act was the subject of substantial reform in 2012 (including the addition of a number of new exceptions), and is slated for another review in 2017. The addition of a new exception at this point in time smacks of self-interested expediency on the part of politicians.

As a matter of substance, it is difficult to comment directly without the actual text of the amendment. However, I offer up some general observations to highlight the complexity of the issues raised, the potential problems, and the ways in which any such amendment might benefit from greater consideration than a budget implementation bill might warrant.

It should be noted that the use of content without need for a licence is already provided for in a variety of contexts under the fair dealing exceptions in the Copyright Act. Under these exceptions, the use of a work must be for a permitted purpose (which can include news reporting, criticism or comment, parody or satire). Such use must also be considered ‘fair’ – in other words, it is not enough to simply allege a specific purpose, one must also use the work or the extract fairly. It is worth noting that the issue of the use of media content in political advertisements in Canada has never been litigated – thus we do not know whether such use might qualify, in appropriate circumstances, for one of the already existing fair dealing exceptions. A first question, therefore, is whether a new exception is needed.

Any specific exception to allow the use of media content in political advertisements would have to consider and define who would be entitled to make such use (Politicians? Candidates? Potential candidates? Political parties? Interest groups?) and what content is up for grabs (Content from mainstream media outlets? From bloggers? Twitter or other social media?). Certain existing fair dealing exceptions require that the source and author be identified when material is used, and presumably something similar should be required here. Further, one would hope that, as with the other fair dealing exceptions, there would also be the additional requirement that any use made of the content must be ‘fair’. It will be very interesting to see whether this is part of any amendment. The ‘fairness’ of any use of content in political advertisements will be a big issue: a use that misrepresents or takes content out of context would be difficult to justify as fair. But if taking things out of context is the name of the game in political ads, will we see an exception that does not impose a fairness limitation on the use of copyright owners’ content?

Any such exception would also fit within the context of the legislation, which provides for certain moral rights. These are available to human authors (and not to corporate owners) of copyright protected works. They can be asserted to protect the honour and reputation of the author, both in terms of the integrity of their work and the causes or institutions in association with which the work is used. While author-employees may waive their moral rights with respect to their employers, they do not, in so doing, necessarily waive them against the rest of the world. Thus, even with a new exception, it might be possible for journalists whose work is used in ways that affect the integrity of their work or that link them, through their work, to a cause or institution they do not support, might still have a moral rights claim. While it is reassuring to think that the exception is not a blank cheque, moral rights case law in Canada is skimpy, and it is difficult to predict what the role will be of moral rights in this context.

Of course, there is a strong public interest in the free and open exchange of ideas. It can certainly be argued that this amendment will enhance the ability to engage with media stories without the need to seek permission to do so, and that this is a good thing – even if many political advertisements are hardly a shining example of engaged political discourse. Nevertheless, to ram through such an exception to the Copyright Act in a budget implementation bill, without due democratic consideration, and in the face of some fairly serious public policy questions on both sides of the issue, makes a mockery of copyright reform. Canadians may remember that it was only in the 2012 amendments to the Copyright Act that an exception was finally included to make the home recording of televised content legal (!) and then only under a tedious list of conditions and limitations. The wheels of copyright reform move slowly and carefully indeed for ordinary Canadians; they clearly move much faster when political self-interest is engaged.

 

The Quebec Court of Appeal has released its decision in Trudeau c. AD4 Distribution Canada inc., a case that balances the freedom of expression with the protection of privacy and dignity. This is an increasingly important theme in privacy case law in Canada; it was at the heart of a recent Supreme Court of Canada decision, albeit in a different context.

In Trudeau, the appellant, Stéfanie Trudeau had launched a law suit against the defendant film company after they released a pornographic film that featured a caricature of her in her professional capacity as a Montreal police officer. She had sought an injunction to prevent the distribution of the film, as well as damages in the amount of $100,000. The film produced by the respondents was titled “728 Agente XXX”. It was described as a parody inspired by the conduct of police at the time of the 2012 Quebec student protests. Although the filmmakers did not use her name in the film, and did not hire an actress who resembled her, the character in the film wore her police badge number 728. The number was not chosen at random; the appellant had become notorious following the student protests. The Quebec Superior Court noted, in its decision, that Agent 728 had become famous almost overnight when a video of her pepper-spraying demonstrators circulated widely in both mainstream and social media. Her badge number was also featured a later point in time in a video shown on mainstream and social media that depicted her forcible arrest of a man caught drinking in public in the Plateau area of Montreal. She was at one point suspended from the police force and an internal inquiry was held.

Ms Trudeau claimed that the film violated her right to privacy and her dignity (protected under sections 4 and 5 of Quebec’s Charter of Human Rights and Freedoms), and that they had usurped her name and image in the making of the film. The trial judge had rejected these arguments. On September 12, 2014, the Quebec Court of Appeal upheld this decision. The Court of Appeal agreed with the trial judge that there had been no usurpation of the appellant’s name or image – her name was not used in the film, and the actress who portrayed agent 728 did not resemble her. Although her badge number was used, and although her badge number could be linked to her through the extensive media coverage of the events leading to her notoriety, the Quebec Court of Appeal agreed with the trial judge that this was not enough to give rise to liability. It had to be shown not just that there was a link, but that any link between the appellant and the film violated her right to privacy or her dignity. The trial judge had found that her badge number was not part of her private identity, but rather was part of her public persona as a law enforcement agent. As a result, the caricature or parody in the film was not about her personally, but about her public persona – one that had engaged in highly publicized and controversial acts. The Court of Appeal agreed that her actions as a police officer could legitimately be the object of caricature and critical comment. According to the Court, the right to make a parody such as the film in question falls within the respondents’ freedom of expression. The Court accepted that there are limits on the extent to which a public figure can be subject to parody, but that these limits were not exceeded in this case. Here, according to the Court, the ordinary citizen would not believe that it is the appellant herself that is depicted, in any personal way, but only an effigy. The court found the parody to be so unrealistic that it could not diminish the appellant, in her personal capacity, in the mind of the public.

The appellant also argued that the fact that the film was pornographic was itself a violation of her dignity. The Court of Appeal disagreed, noting that the case did not involve the use of an actual photograph of the appellant in a pornographic context without her consent. The Court confirmed that the pornographic nature of the film did not remove it from the category of parody or caricature – a form of commentary that is protected by the freedom of expression.

 

Yet another decision regarding official marks highlights the need for reform of this privileged category of marks protected under the Trade-marks Act. In Terrace (City) v. Urban Distilleries Inc., two concurrent owners of the same official mark -- SPIRIT BEAR -- challenged the use by the defendant company of a mark that they claimed infringed their rights in the official mark.

The City of Terrace had requested that the Registrar of Trade-marks give public notice of its adoption and use of the SPIRIT BEAR mark on January 21, 2004. Almost 3 years later, the Kitsaoo Band Council had the Registrar of Trade-marks give public notice of its own adoption and use of the identical mark. This happened because there is simply no mechanism under the Trade-marks Act to evaluate official marks on their merits, or to limit them in cases where they would cause confusion with already existing official marks (or registered trademarks). An initial dispute between the City and the Band Council over their competing marks was resolved by an agreement entered into by the two under which they agreed to share the mark and to jointly licence its use.

The defendant company, Urban Distilleries, manufactures different alcoholic beverages. In 2010 it applied to register the trademark SPIRIT BEAR VODKA, but the City and the Band Council both opposed the application. Urban Distilleries abandoned the application, apparently because it lacked the funds to defend the opposition. Since January 2011, it has sold vodka and gin using the unregistered trademark SPIRIT BEAR.

In August 2013, the City and the Band sought an injunction against Urban Distilleries’ use of the SPIRIT BEAR mark. As part of the remedy they sought an order that Urban Distilleries destroy existing inventory and surrender its profits from the sale of products under the offending mark. Urban Distilleries responded by challenging the validity of the official marks. In particular, it argued that the marks had not been adopted and used prior to official notice being given, and it argued that neither the City nor the Band Council were public authorities within the meaning of subparagraph 9(1)(n)(iii) of the Trade-marks Act. They also argued that their use of the marks was not likely to mislead the public, and therefore was not infringing.

Justice Martineau disposed of the case by considering only the issue of adoption and use of the official marks. He noted that the law requires that such marks be adopted and used prior to the Registrar’s giving of public notice. There is a very low threshold for a finding of adoption. The threshold for “use” is similarly not high: “all that is required for use is that the public authority demonstrate that the official mark was made available for public display prior to publication.” (at para 11) However, he found that in this case, neither the City nor the Band Council could be found to have used the mark SPIRIT BEAR prior to public notice having been given.

In the case of the City, there was evidence that the words “spirit bear” were used on the City’s website. However, he noted that nothing on the site mentioned that these words were a mark associated with goods or services. Internal correspondence from that time regarding the use of “SPIRIT BEAR” was not considered to be sufficiently public. Further, the court found that it was not clear that the words were being used in this correspondence as a mark.

In the case of the Band Council, the court found there was no evidence of public use of the mark by the Band Council as a trademark. There was some evidence of a tourism company that used SPIRIT BEAR in one of its publications and in relation to several tours. However, as there was no evidence of any connection between the tourism company and the Band Council, the court found that this did not support an argument that the mark had been adopted and used by the Band Council at the time that public notice was given. Further, the court was not convinced that the words were used on their own as a trademark (as opposed to as a part of longer mark such as SPIRIT BEAR TOUR).

Because there was no evidence of adoption and use of the mark by either the City or the Band Council prior to public notice being given, the court found that both of the marks were unenforceable, and the suit for infringement must necessarily fail. Justice Martineau observed that the City and the Band Council, armed with appropriate evidence, could ask once again for new public notice to be given of the mark. However, any rights flowing from such a request would only be from the time that the public notice was given. Under the Trade-marks Act, marks that are identical to or confusing with official marks may continue to be used after official notice is given, so long as their use predates the public notice. This is the case for Urban Distilleries – it would be able to continue using its unregistered SPIRIT BEAR marks. However, if a new official mark were to be successfully sought by the City and/or the Band Council, this would freeze Urban Distilleries’ rights to what they were at the time of public notice. This means that Urban Distilleries would not be able to expand its line of offerings under the mark, nor would it be entitled to register its unregistered mark.

The co-existence of identical official marks, the improper granting of public notice, and the arbitrary effects on, in this case, a small business owner, all serve as indicators that the official marks regime is very much in need of reform. (For an earlier posting about another problematic official marks case see here). Private Members’ Bill C-611 is currently before Parliament (the bill is discussed here) and it offers concrete proposals for reform in this area. Let us hope it gets due consideration.

A year ago in November, the Supreme Court of Canada struck down Alberta’s Personal Information Protection Act (PIPA) on the basis that it violated freedom of expression guaranteed by s. 2(b) of the Canadian Charter of Rights and Freedom. It did so by not appropriately striking the balance between the rights of striking works to express themselves in the context of a labour dispute and the privacy rights of others. In Information and Privacy Commissioner of Alberta v. United Food and Commercial Workers, Local 401, an adjudicator under PIPA had ruled that the Union’s practice of taking photographs and videotapes of people crossing its picket line during a labour dispute – and of using some of the footage on its website – contravened the data protection legislation. (The case is discussed in more detail in an earlier blog post here). The Union countered (ultimately, successfully) that to require it to seek consent to the collection and use of this personal information would infringe its rights to freedom of expression.

Where legislation violates a Charter right, a court has various options. Here, both the Information and Privacy Commissioner of Alberta and the Attorney General of that province had asked the Court to strike down the legislation if it were found unconstitutional, rather than to perform judicial surgery on it. The Court agreed this was the better option, writing: “Given the comprehensive and integrated structure of the statute, we do not think it is appropriate to pick and choose among the various amendments that would make PIPA constitutionally compliant.” (at para 40). The Court added a one year period in which the declaration of the legislation’s invalidity was suspended. This would allow the law to remain operative in the province, giving the legislature what was clearly thought to be ample time to introduce the amendment or amendments necessary to bring the statute into compliance with the Charter.

A one-year suspension of invalidity might suffice where a government is functioning as its citizens have a right to expect. However in an age of increasingly dysfunctional governments the Charter remedy of striking down entire statutes with a one-year suspension of invalidity may be a riskier gambit. It has certainly proved to be so in this case. Recognizing that it cannot get amendment’s through by the November 15 deadline set by the Supreme Court of Canada, the Alberta Government as now asked the Court for an extension. The Court is likely to grant the extension – to do otherwise would result in a state of chaos in Alberta as far as private sector data protection is concerned.

Monday, 15 September 2014 08:25

Official Marks Reform Still Sorely Needed

A recent decision of the Federal Court highlights the need for reform to the official marks regime under the Trade-marks Act.

As discussed in an earlier blog post, official marks are a kind of ‘super trade-mark’ available to ‘public authorities’ in Canada. A public authority has been interpreted by the courts as an entity that is under government control and that acts for the public benefit. Official marks are not subject to the rigors of regular applications to register trademarks – there is no examination, no opposition proceeding and no need for the public authority to avoid choosing a mark that may be confusing with an already registered trademark. Once the Registrar gives notice of an official mark, it is protected almost in perpetuity – there is no need to renew such a mark, and there is no administrative process by which unused official marks can be removed. Official marks, even if long unused, therefore, remain a barrier to the registration of regular trademarks, since the adoption, use or registration of a mark “so nearly resembling as to be likely to be mistaken for” an official mark is prohibited.

This was the difficulty faced by the applicant in TCC Holdings Inc. v. Families as Support Teams Society. TCC Holdings sought judicial review of a 1996 decision of the Registrar to give public notice of the mark FAST. The request for public notice of the adoption of this mark came from a registered charity. In 2003, the Federal Court of Appeal confirmed that charitable status was not sufficient to make an organization a ‘public authority’ within the meaning of the Act. Thus, registered charities are not entitled to hold official marks and must apply for trademarks in the usual way. However, since the Trade-marks Act provides for no mechanism to remove official marks, the FAST mark remained on the register of trademarks. To make matters worse, the entity that held this official mark had its charitable status revoked in 2006, and was dissolved in 2007. The mark FAST nonetheless remained on the register. Its presence proved a barrier to TCC Holdings, which had applied in 2011 to register the trademark FAST, and was told that its application was barred due to the presence of the official mark.

TCC Holdings was successful in its application for judicial review to have the official mark removed from the register. Ultimately, however, in order to register its mark, it was subject to delays and to the added expense of an application for judicial review to the Federal Court. None of this should be necessary – the official marks regime is broken, and is very much in need of repair.

In the last session of Parliament, a Private Members Bill (Bill C-611) was introduced by Liberal MP Geoff Regan with a view to reforming the official marks provisions of the Trade-marks Act. The Bill was not considered before the session ended, and it is hoped it will receive due attention. Among other things, the bill proposes a 10 year term of protection for official marks. This term may be renewed, but in cases where the mark has ceased to be used, it will fall off the register, clearing the way for trademark registrations. As the TCC Holdings Inc. case shows, reform of this kind is still sorely needed.

I’m pleased to say that after many years of hard work, my co-authored book with Stephen Coughlan, Robert Currie and Hugh Kindred has just been published by Irwin Law. The book, titled Law Beyond Borders: Extraterritorial Jurisdiction in an Age of Globalization, explores the reach of law beyond state borders from a Canadian perspective. We examine the scope of the legal and practical power of Canada to assert (and to respond to) foreign assertions of extraterritorial jurisdiction. We also develop an analytical framework to guide both law and policy makers faced with the issue of whether to act extraterritorially.

Our book begins with a consideration of the twin forces of globalization and technological change, and the way in which both forces have led to a significant increase in the number of instances in which states may feel the need to act extraterritorially. We also consider how these forces have also undermined the Westphalian notion of exclusive territorial sovereignty. We then review the status quo regarding state jurisdiction both in Canada and internationally, before articulating an important distinction between extraterritoriality, and extended territoriality. Particular consideration is given in this respect to the context of the Internet. The book then poses the question as to when it is appropriate for a state to act extraterritorially. Seven case studies are offered, including the application of human rights law, accountability for human rights abuses, transnational data protection, international terrorism, child sex tourism, internet gambling, and virtual worlds. The book concludes with an articulation of our analytical framework.

Wednesday, 02 July 2014 07:07

Privacy and Open Government

The public-oriented goals of the open government movement promise increased transparency and accountability of governments, enhanced citizen engagement and participation, improved service delivery, economic development and the stimulation of innovation. In part, these goals are to be achieved by making more and more government information public in reusable formats and under open licences. The Canadian federal government has committed to open government, and is currently seeking input on its implementation plan. The Ontario government is also in the process of developing an open government plan, and other provinces are at different stages of development of open government. Progress is also occurring at the municipal level across Canada, with notable open data and/or open government initiatives in Vancouver, Toronto, and Ottawa (to give a few examples).


Yet open government brings with it some privacy challenges that are not explicitly dealt with in existing laws for the protection of privacy. While there is some experience with these challenges in the access to information context (where privacy interests are routinely balanced against the goals of transparency and accountability (and see my posting on a recent Supreme Court of Canada decision on this issue), this experience may not be well adapted to developments such as open data and proactive disclosure, nor may it be entirely suited to the dramatic technological changes that have affected our information environment. In a recent open-access article, I identify three broad privacy challenges raised by open government. The first is how to balance privacy with transparency and accountability in the context of “public” personal information (for example, registry information that may now be put online and broadly shared). The second challenge flows from the disruption of traditional approaches to privacy based on a collapse of the distinctions between public and private sector actors. The third challenge is that of the potential for open government data—even if anonymized—to contribute to the big data environment in which citizens and their activities are increasingly monitored and profiled.

I invite you to have a look at this article, which is published in (2014) 6 Future Internet 397-413.

The U.S. Trademark Trial and Appeal Board (TTAB) has finally ruled on a dispute involving the legitimacy of the Washington Redskins ‘Redskins’ trademarks. In a 2-1 decision in Blackhorse v. ProFootball, Inc.,, the Board ruled that at the time of its registration in the 1960s, the term “redskins” was disparaging to Native Americans. Since U.S. trademark legislation bars the registration of trademarks that are scandalous, immoral or disparaging, the decision that this term was disparaging at the time of its registration means that the registrations of 6 marks featuring the term “Redskins” are invalid. The result is that these trademarks will be struck from the trademarks register (pending the inevitable appeals). The team’s logo was not part of the challenge and remains a registered trademark.

There has long been controversy over the football team’s name – a previous challenge to the trademarks’ validity was unsuccessful due to procedural defects. There have also been repeated calls for the team to change its name voluntarily. More recently, President Obama suggested that it was time for the Redskins to choose a new name. The Redskins’ owner, Dan Snyder, has so far resisted calls for change, and he has indicated that the organization will appeal the TTAB decision.

It should be noted that even if the TTAB decision is upheld, the team will not be forced to change its name. The loss of the trademark registration is not a ban on using the name. It does mean, however, that the Redskins organization will lose the (substantial and significant) benefits of holding a registered trademark. They will lose national protection for the mark, making it much more difficult for them to protect the name against use by others.

As I noted in an earlier post regarding controversy in Canada around the adoption of the same name for a youth amateur football club, the Washington Redskins currently hold registered trademarks in Canada for both their team name and logo. These marks were registered in the 1980s. Although Canada’s Trade-marks Act does not specifically bar marks that are “disparaging”, it does have a clause that renders unregistrable those marks that are “scandalous, obscene or immoral”. Since a mark that falls into this category is not registrable, it is possible to challenge the validity of the trademark on the basis that it was not registrable at the time of registration. No one has yet brought such a challenge to the Redskins’ marks in Canada. There is very little case law in Canada on the scope or interpretation of “scandalous, obscene or immoral”, and, particularly in light of the TTAB decision in the U.S., it would be interesting to see what the outcome of such a proceeding might be.

(If you are interested in reading more about scandalous, obscene and immoral trademarks, have a look at my recent article titled Antisocial Trademarks, which is published in the Trademark Reporter.)

On June 13, the Supreme Court of Canada released its much awaited decision in Spencer v. The Queen. The core issue in this crucially important privacy case was whether there was a reasonable expectation of privacy in Internet Service Provider (ISP) subscriber information linked to a particular Internet Protocol (IP) address. Although privacy experts have for some time considered this question to be a no-brainer, the federal government had stubbornly held to the position that customer name and address information, viewed in isolation, was the kind of data in which none of us has a reasonable expectation of privacy.

Concurrent with the deliberations of the Supreme Court of Canada in Spencer were debates in the House of Commons and in Committee over the Conservative government’s controversial Bill C-13. This Bill will further pave the way for government authorities to gain easy and warrantless access to subscriber information. Among other things, the Bill gives ISPs immunity from any liability for handing subscriber information over to police without notice to or consent from their customers, and upon a simple request for this information to be shared.

Even prior to Bill C-13, provisions in both the Personal Information Protection and Electronic Documents Act (PIPEDA) and the Criminal Code had been argued to grant permission to private sector companies to share personal information with authorities, at the request of those authorities, without a warrant and without notice or consent to the affected customers. The application of these provisions had led to numerous Charter challenges in the lower courts, and these courts were divided as to the interpretation these clauses should be given. Essentially, although the anonymous IP address could reveal a trail of internet-based activities, Crown lawyers argued (and some courts accepted) that the police were ultimately only seeking a simple name and address – information in which there could be little expectation of privacy – and no warrant was required.

The Supreme Court of Canada itself had been a bit iffy when it came to informational privacy. A number of split decisions in the past years showed a lack of consensus on key privacy issues, and some recent decisions were not particularly privacy-friendly. In 2004, a narrow majority of the Supreme Court of Canada found that infra-red technology used by police in fly-overs to measure the heat signature of houses was not privacy invasive, because it did not lead to precise inferences about activities taking place in the house (notwithstanding the fact that the police used the technology to draw inferences regarding the presence of a grow-ops the accused’s home). There was genuine concern that this approach placed an artificial distance between the individual and the information that could be gleaned about their activities through technology. This concern was augmented by the Court’s 2010 decision in R. v. Gomboc, where 4 of the judges found that a very precise recording of daily patterns of electrical use in a home “reveals nothing about the intimate or core personal activities of the occupants. It reveals nothing but one particular piece of information: the consumption of electricity.” (at para 14). This approach, which distanced particular pieces of information from the inferences that could be drawn from them, and that minimized the importance of the decontextualized information, was a matter of great concern to privacy advocates.

This is why the Court’s unanimous decision in Spencer v. the Queen is so important, and why so many privacy advocates awaited it with both anticipation and dread. It is perhaps fortuitous that the backdrop to the Supreme Court of Canada’s deliberations in Spencer was one of ongoing disclosures by Edward Snowden of intrusive and warrantless government surveillance of the online activities of individuals in Canada and elsewhere, and the heated debates over the Conservative government’s latest attempt to facilitate police access to information about Canadians’ online and mobile activities.

The Court in Spencer dismissed the approach that separated the name and address information from the information gleaned from the IP address. Justice Cromwell wrote: “the subject matter of the search is the identity of a subscriber whose Internet connection is linked to particular, monitored Internet activity.” (at para 33). He found as well that anonymity is an important dimension of privacy – one that is “particularly important in the context of Internet usage.” (at para 45) Noting that there is an almost unavoidable tracking of individual activity on the Internet, Justice Cromwell wrote:

The user cannot fully control or even necessarily be aware of who may observe a pattern of online activity, but by remaining anonymous — by guarding the link between the information and the identity of the person to whom it relates — the user can in large measure be assured that the activity remains private. (at para 46)

According to the Court subscriber information links certain types of information to identifiable individuals, and is thus revelatory of a great deal more information than simply a name and address. This in turn triggers a strong privacy interest.

On the issue of the provisions of both PIPEDA and the Criminal Code that permit companies to voluntarily share personal information with law enforcement officials, the Court ruled that these provisions do not override a reasonable expectation of privacy. Since a request by police for subscriber identification engages this privacy interest, it amounts to a search for which a warrant is required. The permissive provision in PIPEDA depends upon police having a lawful authority to obtain the information sought – if a warrant is required, then a request absent a warrant is not made with lawful authority. The Court also ruled that s. 487.014 of the Criminal Code merely confirms existing police powers to make enquiries, but does not give them any authority to circumvent requirements to obtain a warrant.

This decision is extremely important, and should prompt a reconsideration of parts of Bill C-13. Some caution is nonetheless warranted. The Court noted that the reasonableness of a person’s expectation of privacy in their subscriber information in the hands of their ISP may depend upon the wording of their Terms of Service and their ISP’s privacy policy. Essentially, if these documents state that the ISP will hand over customer data to police upon their request; this will undermine the reasonableness of any expectation that this information will remain protected. In an age of consumer helplessness in the face of lengthy, impenetrable and take-it-or-leave it terms of service, it is important to press ISPs – and other service providers – to respect basic privacy values.

After years of neglect, trademark law reform is now all the rage in Canada. Presently, two government bills propose major amendments to the Trade-marks Act – those in the Budget Implementation Act have proven highly controversial; those in Bill C-8 would introduce major changes, although these are less controversial. Yesterday, Liberal MP Geoff Regan introduced a private member’s bill, Bill C-611, which has as its goal the overhaul of official marks under the Trade-marks Act.

Interestingly enough, neither of the government’s trademark law reform bills tackles official marks, notwithstanding that the Report of the Standing Committee on Industry, Science and Technology in March 2013 on the Intellectual Property Regime in Canada recommended that something be done about these marks. Specifically, the report stated:

The Committee recommends that the Government of Canada introduce legislation which amends parts of the Trade-marks Act dealing with official marks to restrict the scope of official marks to important national government symbols and to narrow the definition of public authorities to avoid stifling innovation and distorting markets.

Official marks are a rather unique Canadian creation. Essentially, they allow “public authorities” to bypass the normal procedures (including all of the checks and balances present in the Act) for obtaining a trademark. Instead of applying for a trademark – which is then examined and opened for opposition to insure that it is indeed registrable and does not trample on the trademark rights of others – a “public authority” need only ask the Registrar of Trademarks to give public notice of its adoption and use of an official mark. There are no limits to official marks – they can be identical to or confusing with existing marks, and they can be generic, descriptive or deceptively misdescriptive. Further, unlike regular trademarks which can expire if the registration is not renewed, or which can be lost for non-use, official marks are potentially perpetual.

One of the reasons for the creation of the category of official marks, was perhaps, to save governments from the costs of registering and maintaining trademarks in relation to their various programs and services. While this might be an acceptable rationale for government programs and services in the strict sense, it makes less sense for government entities engaged in the marketing of alcohol and gaming to be exempt from the traditional rules (and checks and balances) of the trademark system.

In addition, until the Federal Court began its attempts to reign in official marks in the early 2000’s, the concept of a “public authority” was rather vague, leading to a flood of bogus official marks. And once public notice is declared, there is no mechanism in place to permit an easy removal of the mark – judicial review must be sought in the Federal Court of the Registrar’s decision to give public notice. This places a costly onus on businesses or other entities that run up against rogue official marks. For example, the Canadian Jewish Congress was obliged to go to court to reverse the decision to allow a U.S.-based evangelical church with a mission to convert Jews to Christianity to hold an official mark for the menorah. In 2005 I wrote an article about a battle between a private company, the Bluenose Heritage Preservation Trust Society and a Nova Scotia business over licensing fees that the Society sought to charge for the use of the name and image of the iconic Nova Scotia schooner. The Society had obtained official marks related to the Bluenose, notwithstanding that it was difficult to see how it qualified as a public authority. The litigation came to an end when the Province of Nova Scotia intervened. The Province subsequently sought to have notice given for its own Bluenose official marks. It is an illustration of the multiple defects of this regime that if you search the trademarks register you will find listed identical official marks held both by the Society and by the Province of Nova Scotia.

It would be easy to go on and on about the problems of official marks and about the problematic exercise of rights in such marks – there are many examples that can be drawn upon. (Do you remember a not too distant news story about a young Nova Scotia musician pursued by the Mint because his album cover featured Canadian pennies (which are official marks of the Mint)? Do you remember Canadian pennies?) But the point here is to discuss the new bill introduced to reform the official marks regime. I should state from the outset that I was consulted on the drafting of this Bill (along with my colleague Andrea Slane). The goal of the exercise was to reform the official marks regime. I note that a good argument could still be made for its wholesale abolition.

The main goal of the proposed reforms is to address some of the regimes key deficiencies. First, the scope of official marks is limited – both in terms of who can get them, and for what purposes. “Public authority” is defined – even more narrowly than in the definition adopted by the Federal Court of Appeal to limit access to official marks. The objective is to limit official marks only to those public authorities with the strongest links to government. Official marks are also available only to public authorities for their names, emblems or logos, or in relation to their programs or services. Access to official marks by universities is limited only to Canadian universities (under the current law, universities in any country of the world can (and do) obtain official marks.)

A second feature of the bill is that it provides for a process by which objection can be made to the public notice given by the Registrar of the official mark. This is meant to be a more expeditious and cheaper procedure than seeking judicial review of a mark. It also introduces other grounds for objection to the official mark, including that it might have a serious adverse effect on the owner of an existing trademark, that it is a generic term, or that it is otherwise not in the public interest.

A third feature sets a term of 10 years of protection for official marks. This protection can be renewed by the public authority – but if it is not, then the mark is no longer protected.

The bill aims to do something that has long needed to be done – it seeks to curtail access to official marks, to place some limits on the marks themselves so as to lessen their impact on other trademark holders, and to provide a mechanism whereby official mark deadwood can be removed. These are certainly important objectives. It is to be hoped that the bill will at least serve to put an option on the table for public debate, with a view to achieving much-needed reform in this area.

 

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Electronic Commerce and Internet Law in Canada, 2nd Edition

Published in 2012 by CCH Canadian Ltd.

Electronic Commerce and Internet Law in Canada

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Canadian Trademark Law

Published in 2010 by Lexis Nexis

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