Archive for February, 2017

Another Canadian Decision Reaches Outside Canada

By Richard Stobbe

This fascinating Ontario case deals with an Alberta-based individual who complained of certain material that was re-published on the website Globe24h.com based in Romania. The server that hosted the website was located in Romania. The material in question was essentially a re-publication of certain publicly available Canadian court and tribunal decisions.

The Alberta individual complained that this conduct – the re-publication of a Canadian tribunal decision on a foreign server – was a breach of his privacy rights since he was named personally in this tribunal decision.

So, let’s get this straight, this is a privacy-based complaint relating to republication in public of a publicly available decision?

Yes, you heard that right. This Romanian site scraped decisions from Canadian court and tribunal websites (information that was already online) and made this content searchable on the internet (making it …available online).

This is an interesting decision, and we’ll just review two elements:

The first issue was whether Canadian privacy laws (such as PIPEDA ) have extraterritorial application to Globe24h.com as a foreign-based organization.  On this point, the Ontario court, citing a range of past decisions (including the Google v. Equustek decision which is currently being appealed to the Supreme Court of Canada) said:

“In this case, the location of the website operator and host server is Romania. However, when an organization’s activities take place exclusively through a website, the physical location of the website operator or host server is not determinative because telecommunications occurboth here and there”: Libman v The Queen, 1985 CanLII 51 (SCC), [1985] 2 SCR 178 at p 208 [Emphasis added]

Secondly, the Ontario court reviewed whether the Romanian business was engaged in “commercial activities” (since that is an element of PIPEDA) . The court noted the Romanian site  “was seeking payment for the removal of the personal information from the website. The fees solicited for doingdoing so varied widely. Moreover, if payment was made with respect to removal of one version of the decision, additional payments could be demanded for removal of other versions of the same information. This included, for example, the translation of the same decision in a Federal Court proceeding or earlier rulings in the same case.”

The Romanian site made a business out of removing data from this content, but the court’s conclusion that “The evidence leads to the conclusion that the respondent was running a profit-making scheme to exploit the online publication of Canadian court and tribunal decisions containing personal information.” [Emphasis added] – in a general sense, that statement could just as easily apply to Google or any of the commercial legal databases which are marketed to lawyers.

The court concluded that it could take jurisdiction over the Romanian website, and ordered the foreign party to take-down the offending content.

This decision represent another reach by a Canadian court to takedown content that has implications outside the borders of Canada.  From the context, it is likely that this decision is going to stand, since the respondent did not contest this lawsuit. The issue of extra-terrtorial reach of Canadian courts in the internet context is going to be overtaken by the pending Supreme Court decision in Equustek. Stay tuned.

 

Calgary – 07:00 MT

 

 

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VCC vs. VCC: Where’s the Confusion?

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By Richard Stobbe

When we’re talking about trademarks, at which point do we measure whether there is confusion in the mind of the consumer?

We reviewed this issue in 2015 (See: No copyright or trademark protection for metatags). In that earlier decision, Vancouver Community College sued a rival college for trademark infringement, on the basis of the rival college using “VCC” as part of a search-engine optimization and keyword advertising strategy. The court in that case said: “The authorities on passing off provide that it is the ‘first impression’ of the searcher at which the potential for confusion arises which may lead to liability. In my opinion, the ‘first impression’ cannot arise on a Google AdWords search at an earlier time than when the searcher reaches a website.” In other words, it is the point at which a searcher reaches the website when this “first impression” is gauged. Where the website is clearly identified without the use of any of the competitor’s trademarks, then there will be no confusion. That was then.

That decision was appealed and reversed in Vancouver Community College v. Vancouver Career College (Burnaby) Inc., 2017 BCCA 41 (CanLII). The BC Court of Appeal decided that the moment for assessing confusion is not when the searcher lands on the ‘destination’ website, but rather when the searcher first encounters the search results on the search page.  This comes from an analysis of the Trade-marks Act (Section 6) which says confusion occurs where “the use of the first mentioned trade-mark … would cause confusion with the last mentioned trade-mark.”

And it draws upon the mythical consumer or searcher – the “casual consumer somewhat in a hurry“. The BC court reinforced that “the test to be applied is a matter of first impression in the mind of a casual consumer somewhat in a hurry”, and as applied to the internet search context, this occurs when the searcher sees the initial search results.

To borrow a few phrases from other cases, trade-marks have a particular function: they provide a “shortcut to get consumers to where they want to go” and “Leading consumers astray in this way is one of the evils that trade-mark law seeks to remedy.” (As quoted in the VCC case at paragraph 68).  Putting this another way, the ‘evil’ of leading casual consumers astray occurs when the consumer sees the search results displaying the confusing marks.

On the subject of whether bidding on keywords constitutes an infringement of trademarks or passing-off, the court was clear: “More significantly, the critical factor in the confusion component is the message communicated by the defendant. Merely bidding on words, by itself, is not delivery of a message. What is key is how the defendant has presented itself, and in this the fact of bidding on a keyword is not sufficient to amount to a component of passing off…” (Paragraph 72, emphasis added).

The BC Court issued a permanent injunction against Vancouver Career College, restraining them from use of the mark “VCC” and the term “VCCollege” in connection with its internet presence.

Calgary – 07:00 MT

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