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Teresa Scassa

Teresa Scassa

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.

 

The British Columbia Supreme Court has certified a class action law suit against Facebook for breach of privacy rights protected under B.C.’s Privacy Act. In doing so, it dismissed Facebook’s application to have the court decline jurisdiction to hear the case.

The claim in Douez v. Facebook, Inc. relates to Facebook’s Sponsored Stories “product”. Sponsored Stories permits paid advertisers to use the names and likenesses of users of Facebook, alongside information about their product and service and their trademarks. The resulting “Sponsored Stories” are then sent to the contacts of the person featured in the ‘story’. The court found that between September 9, 2012 and March 10, 2013, 1.8 million B.C. residents were featured in Sponsored Stories. Individual Facebook users are given no notice of the fact that they are featured in a Sponsored Story. The class Plaintiff Douez argued that the use of the names and images of herself and other Facebook users from B.C. violated s. 3(2) of the Privacy Act, which provides:

3. (2) It is a tort, actionable without proof of damage, for a person to use the name or portrait of another for the purpose of advertising or promoting the sale of, or other trading in, property or services, unless that other, or a person entitled to consent on his or her behalf, consents to the use for that purpose.

Facebook argued that all of its users must accept its terms of use and privacy policy in order to use the site. In this way, it obtains the express consent of users to have their names and images used in Sponsored Stories. It also put forward a secondary argument regarding implied consent.

The focus of Facebook’s application to have the Plaintiff’s certification application dismissed was an argument based upon the lack of jurisdiction of the B.C. Supreme Court over the matter. Facebook argued that its Terms of Use, to which all users must consent, contains a forum selection clause that provides that disputes will be heard by the courts of California. Justice Griffin of the B.C. Supreme Court noted that the choice of jurisdiction clause was found near the end of exceeding long terms of use, making it relatively obscure. She distinguished an earlier Ontario case, Rudder v. Microsoft Corp which upheld a choice of jurisdiction clause in an online consumer contract on the basis that the claim in that case was one of breach of contract. The plaintiffs in Rudder therefore relied on the terms of the contract on the one hand, and claimed not to be bound on the other. She also distinguished the more recent BC Supreme Court decision in Century 21 Canada Ltd. Partnership v. Rogers Communications Inc., which also held that the parties were bound by online terms of use, on the basis that both were “sophisticated commercial parties who employ similar terms of use themselves and who had conceded the reasonableness of the terms of use at issue.” (at para 45).

Justice Griffin found that the plaintiff had shown strong cause for the court not to enforce the forum selection clause. She noted that the B.C. Privacy Act gave exclusive jurisdiction over claims arising under that Act to the B.C. Supreme Court. As a result, a California court could not have jurisdiction over such a claim. She took note as well of the “cultural differences in the ways various jurisdictions think of a right to privacy”, suggesting that a court in California might not interpret the right of privacy in the Privacy Act in a manner consistent with Canadian approaches to privacy. She concluded that “the availability of a statute-based claim in the court’s own jurisdiction, which confers exclusive jurisdiction on that court, can on its own be a basis for overriding a forum selection clause, but also can support two other “strong causes” for not enforcing a forum selection clause, namely, juridical advantage and public policy.” (at para 93). According to Justice Griffin, a court in California would have no jurisdiction over a Privacy Act claim, such that enforcing the forum selection clause would rob the plaintiff of her recourse. Further, she found that the protection of privacy was a matter of important public policy. She also noted that “with the creation and growth of the internet the potential implications for a loss of privacy are greater than ever. The difficulty in proving quantifiable damage remains great for an individual whose privacy is lost, but the social harm can be monumental if the loss of privacy includes publicity over the internet with its almost infinite reach and timelessness.” (at para 104). In addition to these reasons for not enforcing the forum selection clause, Justice Griffin found that it would cause much less hardship overall for Facebook to defend itself in B.C. than for the plaintiff and her witnesses to travel to California to plead their case.

Justice Griffin also certified the class proceeding. The relevant class is:

All British Columbia Resident natural persons who are or have been Members of Facebook at any time in the period from January 1, 2011, to May 30, 2014 and:

(a) who at any time during this period registered with Facebook using either their real name or a portrait that contained an identifiable self-image or both;

(b) whose name, portrait, or both have been used by Facebook in a Sponsored Story; and,

(c) who do not seek to prove individual loss as a result.

It is clear that a central issue in the law suit will be whether users consented, via Facebook’s Terms of Use to their names or images in Sponsored Stories.

Note that a similar class action law suit in the United States related to Facebook’s Sponsored Stories resulted in a $20 million settlement agreement in 2013.

Canada’s federal Conservative government has nominated Daniel Therrien as the next Privacy Commissioner of Canada. If this appointment is approved by resolution of the Senate and House of Commons, he will take over the position that was held until recently by two-term Privacy Commissioner Jennifer Stoddart.

Mr Therrien is lawyer and a career civil servant who has held many different posts. He currently holds the position of assistant deputy attorney general for public safety, defence and immigration. Mr. Therrien is not widely known in the privacy law field. In its information provided at the time of his nomination, the government notes that he “co-led the negotiating team responsible for the adoption of privacy principles governing the sharing of information between Canada and the U.S. under the Beyond the Border Accord.”

The NDP has already indicated that it will not support the nomination. The CBC reports that the NDP has expressed concerns that Mr Therrien has worked to closely on developing policies or legislation which he would have to oversee as Privacy Commissioner.

Since Jennifer Stoddart’s departure in December 2013, the Office of the Privacy Commissioner of Canada has been led by Chantal Bernier, who had previously served as Assistant Privacy Commissioner.

Jennifer Stoddart, who was highly regarded both nationally and internationally, was a strong leader, an innovative thinker and a strong voice for privacy. She leaves very big shoes to fill.

On April 24, 2014 the Supreme Court of Canada handed down a decision which at least touches upon the thorny question of what constitutes “personal information”. This question is particularly important to governments that are contemplating the proactive release of government data under commitments to open government. The issue is far from academic, as federal, provincial and municipal governments in Canada have all taken steps in this direction. Indeed, the Ontario government has just signaled its own commitment to open government, which will include proactive disclosure of government data.

Most public sector data protection laws in Canada define “personal information” as essentially information about an identifiable individual. This means that “personal information” is more than just information that actually identifies an individual (their name or social insurance number, for example) but also includes any other information that, if linked with other available information, could lead to the identification of a specific individual. Thus, a government contemplating the proactive disclosure of data sets under an open data program, would have to ensure that the data sets were free not just of individuals’ names and identification numbers, but also free of data that could be linked back to specific individuals. This can be more challenging than one might think, particularly as we live in an environment where more and more data is becoming easily available from both public and private sector sources, and where search engines, algorithms and computing power make mining and matching information increasingly fast, inexpensive and easy.

The case – Ministry of Community Safety and Correctional Services v. Information and Privacy Commissioner (Ontario) – involved an access to information request made by a journalist to the Ministry of Community Safety and Correctional Services. The journalist sought the disclosure of the number of registered sex offenders in Ontario who lived within each postal code forward sortation area (the area designated by the first three digits of a postal code). The journalist did not seek access to this information by full postal code, presumably because this finer level of detail might lead to the identification of those individuals, particularly where there were relatively few residences associated with a particular postal code. While Ontario maintains a sex offender registry, the locations of the registered sex offenders are not public information. The register is intended primarily for use by law enforcement officials. The journalist planned to create a map which would allow the public to see a more generalized geographic representation of where registered sex offenders in Ontario were living. The Ministry refused to disclose this information on the basis that it could lead to the identification of specific individuals. It argued not just that the information could not be disclosed because it fell within the definition of “personal information” but also because its release would interfere with law enforcement, endanger the life or physical safety of the individuals, and might hamper the control of crime (by making sex offenders less likely to comply with the registration requirements out of fear of identification). All of these bases are exceptions to disclosure of information under the provinces Freedom of Information and Protection of Privacy Act (FIPPA). The Ministry’s refusal was appealed by the journalist to the Office of the Information and Privacy Commissioner, which ordered that the information be disclosed. The Commissioner’s decision was upheld by the courts all the way up to the Supreme Court of Canada, which also upheld the order to release the information sought by the journalist.

The Supreme Court considered three issues: the level of deference due to the decision of the Information Commissioner, whether access was ordered for purposes inconsistent either with FIPPA or with the law governing the sex offender registry, and whether the Commissioner’s interpretation of the scope of the law enforcement exceptions to information disclosure was appropriate. Yet underlying these issues was a key question which itself was not in dispute before the Court. This was whether the information sought constituted personal information – in other words, information about an identifiable individual. The approach of the Commissioner to this question was not part of the appeal, yet once it was accepted that the information sought was not personal information, it would be difficult to find that any of the harm-based exceptions to disclosure would apply – no matter what interpretation they were given – because information that could not lead to the identification of specific individuals would be highly unlikely to cause them harm and, in theory at least, less likely to deter them from complying with the registry requirements.

In refusing to disclose the information, the Ministry had argued that the information being sought was personal information because it could be linked with other available information in order to re-identify individuals. This issue of the potential for re-identification is central to the question of whether information qualifies as a personal information, and in the context of open data, it will be crucial in decisions about whether certain data sets may be proactively disclosed. It is important to note that the Commissioner in this case observed that the Ministry had not advanced any cogent evidence of the potential for re-identification. This point was picked up by the courts below, and the Supreme Court of Canada agreed. Writing for the Court, Justice Cromwell noted that “the Commissioner determined that the Ministry did not provide any specific evidence explaining how the Record could be cross-referenced with other information in order to identify sex offenders. We find this to be a reasonable determination.” (at para 60) Indeed, very little specific evidence was provided, and the court dismissed more general literature on re-identification as “unconvincing and generic scholarly research on ‘identifiability’.” (at para 60) The Court also agreed with the Commissioner’s rejection of the Ministry’s assertions that more information might someday be available on the Internet that could, if matched with the sex offender data, lead to identification. Justice Cromwell stated: “it must be stressed that the Ministry only referred vaguely to the unpredictability of internet developments and did not provide any specifics about how identification could occur.” (at para 61).

The case involved a dispute over the release of data in the context of a specific access to information request. Yet there are lessons here for those tasked with identifying data sets for proactive release for the purposes of open data. These might be summarized as follows:

  • The definition of “personal information” under access to information and data protection laws in Canada tends to be broad and will include information about an identifiable individual. Thus it is important to consider not just whether there are specific personal identifiers in the data set, but whether this data could, if matched with other available data, lead to the identification of specific individuals.
  • In considering the likelihood of re-identification, it would seem that the balance between the goals of transparency and accountability and those of privacy protection do not require ‘worst case scenario’ or extreme hypothetical speculation. In the access to information context, the department or agency in question would bear the burden of justifying a refusal to disclose, and justification must be more than assertions. Presumably the same standard would apply to proactive disclosure. The law does not require excessive caution.
  • In considering the possibility of re-identification, it might also be appropriate to consider how sensitive the personal information would be if re-identification were achieved. In Ministry of Community Safety, the information at risk of disclosure through re-identification was highly sensitive – the location of registered sex offenders. Presumably this might give some an incentive to attempt re-identification, perhaps warranting greater caution in the decision about whether to release the information. Nevertheless, the Commissioner, and ultimately the courts, still required some evidence that re-identification was possible.

 

Ontario’s Divisional Court has decided to certify a class proceeding in Keatley Surveying Ltd. v. Teranet Inc., a case that raises issues about the copyright status of plans of survey that are prepared by surveyors and deposited in provincial land registries. (The decision of the court below refusing to certify the class action was discussed here.) The defendant, Teranet Inc. is the company that runs the province’s electronic land titles system. The class plaintiff argues that individual land surveyors hold copyright in their surveys, and it argues that the defendant Teranet violates those copyrights when it makes electronic copies of those surveys available to others for a fee. The defendant raises several arguments in its defence. These include an argument that copyright in the surveys belongs to the Crown because of the statutory requirement for such surveys. Alternatively, it is argued that copyright is assigned to the Crown through the act of registering the document. Another possibility is that the statutory scheme that governs the registration of a plan of survey creates a process whereby the surveyor consents to the copying of the submitted plan for public purposes. Finally, there is the argument that the electronic land registry system operated by Teranet confers a public benefit such that it would be against public policy to permit surveyors to enforce their copyrights. As noted in a recent posting, these questions regarding the copyright status of documents in public registries are both interesting and important, and arise in other contexts as well.

The Divisional Court was prepared to certify the class proceeding because certain deficiencies identified by the judge at first instance had been corrected in the plaintiff’s revised class certification request. For example, while initially the class had been defined in such a way that membership in the class depended on how the substantive issues would be decided, the revised definition of the class simply includes all land surveyors in Ontario who are authors of a plan of survey found in the electronic database, or who might hold copyright in such a plan as a result of their status as employer of a surveyor, or as an assignee of either the surveyor or his/her employer. The Court of Appeal also found that the other requirements for certification of a class were met.

The Court of Appeal’s decision paves the way for this law suit to proceed – though it remains far from certain that any of the underlying copyright issues will ever ultimately be decided by a court. Nevertheless, should this dispute make its way to court, it may well provide important guidance regarding copyright in documents of all kinds that are filed in public registries for statutory purposes.

The federal government’s recently introduced Budget Implementation Bill (Bill C-31) is accompanied once again by hundreds of pages of unrelated amendments to various federal laws. Almost lost among all of this legislative noise are 36 pages of amendments to the Trade-marks Act (which, once these amendments are passed and not a moment too soon, will be renamed the Trademarks Act). These amendments are all ones considered to be necessary in order for Canada to implement the Madrid Protocol and the Singapore Treaty – two of the international treaties tabled in Parliament earlier this year.

One could argue that since the amendments do not go further than the implementation of these treaties, then there is little harm in pushing them through in the rather bloated charade of democracy that budget implementation bills have become. Unfortunately, what Canadians are really being denied is an opportunity to hear debate on whether the implementation of these treaties is actually in the country’s best interests. Although there are arguments to support the implementation of treaties that harmonize certain procedures around the registration of trademarks and that permit Canadian companies to take advantage of a simplified international filing procedure where trademark registration is sought in multiple jurisdictions, there are also arguments for the status quo. The changes to Canada’s trademark system – particularly the abandonment of a requirement that a trademark be used before it is registered – could very well lead to a flood of trademark registrations in Canada by foreign companies that will clutter the register with unused trademarks and that will ultimately make it more difficult for Canadian companies to adopt, use and register the marks of their choice.

The amendments to the Trade-marks Act introduced in Bill C-31are likely to leapfrog over the amendments proposed in Bill C-8, which has been making its sluggish way through the more usual democratic channels (you know – where there is debate on the merits of the amendments, committee hearings, and sometimes even changes made to improve the bill). In fact, a good part of the trademark-related content in the Budget Implementation Bill consists of sorting out when different provisions will come into effect relative to C-8, particularly where they depend upon certain changes being implemented by C-8. This promises a confusing tangle of changes to the law; trademark lawyers will have to be consoled by the fact that they bill by the hour.

Does copyright subsist in documents that must be submitted as part of judicial or regulatory processes and that are, as a result, publicly available? Some time ago I wrote about two cases making their way through the legal system that raised this issue. A proposed class action settlement agreement in one of these cases, Waldman v. Thomson Reuters Canada, Ltd., has just been smacked down by Justice Perell of the Ontario Superior Court.

The representative plaintiff of this class action lawsuit is lawyer Lorne Waldman, who is well known for his representation of Maher Arar, among others. The defendant is Thomson Reuters Canada Ltd., which operates a major legal database on a fee-for-access basis. As part of this database it provides a “Litigator” service which includes copies of documents filed by lawyers in important cases in Canada. The kinds of documents reproduced in Litigator include affidavits, factums, and pleadings. Such documents are of use to other lawyers – and to the growing number of self-represented litigants – as precedents, or as research resources. They are also of interest to law students and legal academics.

The copyright issues around such documents are interesting. Most would be considered original works of authorship, and would normally be protected by copyright. Because these documents must be filed in court proceedings, they are generally publicly accessible under the open courts principle. However, for the most part these documents are still not available in open, electronic databases hosted by courts. Where they are not electronically available, individuals may consult the court files in person, and/or may request copies of documents for a fee. No licence is sought by the court registrars from lawyers in these circumstances for the right to copy their documents. Indeed, under the open courts principle, a lawyer could not refuse permission to access or copy these documents. Although not directly on point, in a recent court decision in the U.S., which involved claims of copyright in court documents, the court found that as between courts, clients and their lawyers, copyright issues had to take a back seat to the interests of justice.

Even if there were no general licence to copy court documents, in the case of those who are not parties to the litigation and who seek to use such materials, whether they are found in court records or in Litigator, copyright’s fair dealing exception for research or private study would most likely cover their activities. Recent Supreme Court of Canada decisions make it clear that courts should take a liberal approach to interpreting fair dealing, including fair dealing for the purposes of research or private study. In 2004, the Supreme Court of Canada specifically found that research for commercial purposes – including legal research carried out for clients – fell within the scope of this defence. It is less clear that the activities of Thomson would qualify as fair dealing, but to the extent to which they facilitate access to documents already available to the public, there may be some traction to the argument.

It is likely that rather than find that documents filed in court are not protected by copyright at all, a court would find that there is an implied licence permitting copying in respect of all documents filed in court proceedings. What is less clear is the scope of any such licence. Would it include the broad-based copying of materials so as to make them available for a fee? Would it make a difference if the cost of acquiring copies through this paid service was less than the cost of acquiring those copies through the courts?

In the settlement agreement that was brought to the court for its approval, Thomson agreed not to claim copyright in the materials in Litigator, and to provide notice to its subscribers that some material in its database might be covered by third party copyright. It also agreed that for a period of ten years (and apparently no longer) it would give notice to any lawyer whose materials it planned to include in Litigator. If the lawyer objected to the inclusion of the materials, those documents would be excluded from the service. It also agreed to create a trust fund to support public interest litigation. In exchange for the above, the class members would provide Thomson with a non-exclusive worldwide, perpetual and irrevocable licence to use the works. Class members would have the ability to opt out of the settlement. The settlement agreement also included a fee of $850,000 to be paid to the lawyers for the class.

There was support for the settlement from a number of organizations such as the Canadian Bar Association, the Canadian Civil Liberties Association, and the B.C. Civil Liberties Association. These organizations were chiefly onside because of the trust fund that would benefit public interest litigation. Six class members also wrote letters in support of the settlement. However, support was not universal. Seven class members wrote letters opposing the settlement. It may not be surprising that the lightning rod for opposition to the settlement was the huge disparity between the amount of the fund created to support public interest litigation and the fees sought by class counsel. One opponent wrote: “this smacks of lawyers taking an opportunity to make money in a scenario where there was likely little value to the individual class members.” (at para 69). Another stated: “This reeks of a distortion of the noble goal of legitimate class action proceedings”. (at para 70). A third lawyer objected on the basis that he felt that court documents were public as of the moment of filing, and should be readily available electronically. Another noted that class members received nothing of benefit in exchange for the licence they would be required to give to Thomson.

Justice Perell was unequivocal in his rejection of this settlement agreement. He found that the Agreement was not “fair, reasonable, and in the best interests of the Class Members” (at para 90). He found that the settlement allowed the plaintiffs to “emerge unscathed” from what was now “prohibitively high-risk litigation” (presumably because of the weakness of the copyright claims). For Thomson, the Agreement would allow it to acquire, at relatively low cost, 13,000 non-exclusive copyright licences and releases from copyright owners. They also would evade any litigation risk, and would be spared further costs of litigation.

Justice Perell found that the class members would derive no benefit from the agreement. In fact, he concluded that the agreement “brings the administration of justice and class actions into disrepute because: (a) the Settlement is more beneficial to Class Counsel than it is to the Class Members; and (b) in its practical effect, the Settlement expropriates the Class Members’ property rights in exchange for a charitable donation from Thomson.” (at para 95). Interestingly, Justice Perell characterized the principle at issue in this case as being “that Thomson should not take what most lawyers would be prepared to give away for free if only politely asked.” (at para 98). Here, Justice Perell found that providing Thomson with a licence did not respond to that basic principle. He found that “there is no access to substantive justice for the claims of Class Members and no meaningful behaviour modification for Thomson.” (at para 101)

Justice Perell was also scathing about the imbalance between the amount of the charitable trust fund and the amount of the lawyers’ fees. He was not mollified by the offer of class counsel to donate $150,000 of their fee payment to the trust fund. He wrote “a fairer and more reasonable resolution of this class action would have been to seek court approval of a discontinuance of the action on terms that provided for a cy-près payment and a fair and reasonable Class Counsel Fee and no granting of licences.” (at para 107)

It would seem that this suggestion of a possible settlement embraces the view that no licence is needed to copy the documents at issue. Yet, it is not clear what any settlement that did not involve a concession of licences would mean for Thomson and its desire to continue offering these materials through Litigator. Without resolution of the underlying copyright issues, the uncertainty regarding the re-use of such materials will remain.

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