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The use of social means to engage in defamation is nothing new. Indeed, defamation requires the very social element of publication. Social media – Facebook pages or posts, tweets, blogs and online comments – merely make defamation easier and more pervasive.

Canadian courts have struggled to balance the interests of free speech with the interests of individuals who wish to challenge and find redress for defamatory statements. A recent Ontario case has framed the issue as follows:

     “There are few things more cowardly and insidious than an anonymous blogger who posts spiteful and defamatory comments about reputable member of the public and then hides behind the electronic curtain provided by the Internet. The Defendant confuses freedom of speech with freedom of defamation. There are, undoubtedly, legitimate anonymous Internet posts: persons critical of autocratic or repressive regimes, for example, or legitimate whistleblowers. The Defendant is not one of those people. The law will afford his posts all the protection that they deserve, which is to say none.”  Manson v. John Doe , 2013 ONSC 628 (CanLII),

The test laid out by the Supreme Court of Canada (Grant v. Torstar Corp., 2009 SCC 61 (CanLII)) is as follows: In order to establish a claim for defamation a plaintiff must establish that:

a)   the impugned words are defamatory, in the sense that they would tend to lower the plaintiff’s reputation in the eyes of a reasonable person;

b)   the words in fact refer to the plaintiff; and

c)   the words were published, i.e., that they were communicated to at least one person other than the plaintiff.

In Manson, the court ordered the defendant to pay damages of $100,000 plus aggravated damages of $50,000 and costs. However, the defenant remains anonymous.

Another recent decision in Baglow v. Smith, 2012 ONCA 407 (CanLII), hints at the court’s willingness to permit parties to engage in a heated online political debate, without crossing the line of defamation. In that case, the court observed: “Commentators engaging in the cut and thrust of political discourse in the internet blogosphere can be fervent, if not florid, in the expression of their views.” In the lower court, the statements made in this “cut and thrust” were determined not to constitute defamation. However, on appeal, the court decided the matter was suitable for a full trial and overturned the lower court findings. This is one case to watch.

Related Reading: ipblog’s Defamation Archive

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A Czech outfit calling itself the WDTP (Worldwide Database of Trademarks and Patents) regularly sends invoices to Canadian trade-mark owners, claiming to be owed a few thousand dollars as a “filing fee”. The WDTP is just one of many such operations, based in places such as Hungary, Slovak Republic or even within the United States.  These outfits have made a business out of sending bogus unsolicited invoices to legitimate trade-mark owners. They base their letters on trade-mark registration data gleaned from the public US or Canadian trade-mark databases. They even appear to have trouble distinguishing between themselves, since one recent letter warned the reader that it was not associated with those other bogus outfits with similar-sounding names.

It’s small wonder that there is confusion since the names are chosen to be vaguely similar to legitimate government offices. Here is a sampling of a few names: Trademark Registration and Monitoring Office (Past Due Notice) , Trademark Registration and Monitoring Office (Intellectual Property Rights Recordation Alert), United States Trademark Registration Office, Patent & Trademark Agency, United States Trademark Maintenance Service, U.S. Trademark Compliance Service, WDTP, CPTD, WIPT, RIPT, IOPR and so on.

Lessons for business:

• Don’t respond to any “invoices” other than correspondence from your trade-mark agent, or if you are filing directly with the trade-marks office, then look for official correspondence from the trade-marks office in which you have filed.
• The USPTO has posted a warning, listing companies who are known to be circulating such solicitations (with helpful examples of letters that trade-mark owners have received);
• The Canadian Intellectual Property Office has a similar page, but does not list specific entities;
• The World Intellectual Property Office also has a warning page, with examples and names of entities.

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Since our earlier post last year (Sound Marks in Canada), the road has been open for non-traditional “sound mark” applications in Canada. These are trade-marks that are perceived as sound rather than visually as a word or design. So far, about 20 applications have been filed in Canada, from the 1 second “YUMMM” mark, applied for by Red Robin restaurants, all the way to the Harlem Globetrotters’ SWEET GEORGIA BROWN MELODY, which tips the scales at 2 minutes 49 seconds.

If you want to seek protection for a sound mark, the application should:

• state that the application is for the registration of a sound mark;
• contain a drawing that graphically represents the sound;
• contain a description of the sound; and
• contain an electronic recording of the sound.

If you want advice on sound marks, we’ll lend an ear: Contact Us.

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Here is the next case that illustrates the potential pitfalls when dealing with social media:

This recent US copyright decision involving Agence France Presse (AFP) and photographer Daniel Morel dealt with the rights of a news publisher to publish images posted to Twitter.

Mr. Morel is a photojournalist who took a number of images of the 2010 earthquake in Haiti. He then posted those images to Twitter. Those images were picked up by AFP who “licensed” the images on to Getty Images.

When Morel complained, steps were taken to have the images removed from the AFP / Getty system. But through series of mixups (of the kind that would be familiar to anyone dealing with information technology and complex organizations such as AFP and Getty Images), the pictures were not removed and were picked up and published by The Washington Post under their agreement with AFP/Getty.

The court ultimately had to decide whether Mr. Morel – the photographer – had granted a kind of license to AFP by posting his images to Twitter. This required an analysis of the Twitter Terms of Service. The court decided no, the Twitter Terms of Service do not grant such a license. The court stated that “even if some re-uses of content posted on Twitter may be permissible, this does not necessarily require a general license to use this content as AFP has.” Put another way, a copyright owner who posts content to Twitter is clearly giving up some rights to that content – the right, for example, to re-tweet, which is a fundamental part of Twitter and is contemplated (even encouraged) by Twitter’s Terms of Service. However, merely by posting to Twitter, that copyright owner is not giving others an unrestrained right or license to remove the content, copy it and redistribute it commercially.

The court says “…the Twitter TOS were not intended to confer a benefit on the world-at-large to remove content from Twitter and commercially distribute it…” This is an important reminder.

In the final analysis (and that is 58 pages of analysis if you want to read the judgement) AFP and The Washington Post were liable for copyright infringement for use of Morel’s images.

Lessons for business:

• This case confirms that any re-use of content from Twitter – and by extension, other social media streams – should be handled carefully.
• Re-tweets are clearly contemplated as being within the scope of permitted uses, but copying and republishing for commercial purposes clearly is not.
• Many situations will fall somewhere in the middle between those two ends of the spectrum. Before using or re-using content for commercial purposes, take time to review the specific situation, including the applicable social media terms of service. Before posting your own content to Twitter, be aware that the Twitter terms do contemplate certain re-uses (the scope of which is difficult to define precisely). Once it’s posted, it’s hard to stuff the genie back in the bottle

The case is Agence France Presse v. Morel.

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Social media law was not a topic on offer when I went to law school. Now, it’s a subject that’s hard to avoid for any business that has a consumer-facing social media presence. Here are two recent cases that illustrate the potential pitfalls as this area of law becomes more complex and more interesting:

Last week, HMV’s Twitter feed was hijacked by an employee who live-tweeted employee terminations from the company’s official Twitter account. Perhaps “hijacked” isn’t the right word, since the employee apparently had access to the account as part of her employment duties, though that position likely did not involve posting descriptions of firings as “Mass execution of loyal employees”. The next day the ex-employee (“Poppy Rose”) helpfully tweeted a reminder to the company that “you need to go to ‘settings’ and revoke my account access as an admin“. The lessons for business?

• Many companies are slow to grasp the power of social media. Don’t underestimate the viral nature – both good and bad – of this tool. Though the offending tweets were deleted by the company, this became a national story within a few minutes. From the company’s perspective, it required careful handling to avoid any brand damage.
• This highlights the need for a Social Media Policy for employees, to deal with the legal pitfalls of social media and particularly those employees who are engaged directly in social media sphere on behalf of the company. The ownership and control of corproate social media accounts is a simple but important element of such a policy.

Related Reading: Who Owns Social Media Contacts: Employers or Employees?

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Field Law is a proud sponsor of next week’s Alberta Venture Fast Growth 50 Awards on February 12, 2013. This year the event is expanding to include a half-day conference themed around “Money, Management & Markets.” Intellectual property assets are central to the value of many companies on the Fast Growth 50 list, including those on the list who are clients of the Field Law Intellectual Property & Technology Group.

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The Alberta, British Columbia and Canadian privacy commissioners have released guidance on Cloud Computing for Small and Medium-sized Enterprises: Privacy Responsibilities and Considerations. These documents are designed for practical application to small business, including the issues around transborder data flow.

Related Reading:

• The OPC’s Guidelines for Processing Personal Data Across Borders (PDF);

• Outsourcing by Canadian Companies: Another Look at the USA PATRIOT Act
• Cloud Computing Law: Balancing Privacy and Investigation

Related Event:

Next month, on March 11 and 12, the Canadian Cloud Council’s Cloud Matters conference takes place in beautiful Banff, Alberta. Check out the conference program. I will be attending as a member of the Canadian Cloud Council.

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