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Teresa Scassa

Teresa Scassa

The Supreme Court of the United States (SCOTUS) has struck down a provision of that country’s trademark statute, the Lanham Act, for violating the constitutionally guaranteed freedom of speech. The provision in question is the “disparagement” clause, which barred the registration of any trademark “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” (§1052(a)).

The long-simmering issue of the constitutionality of this provision came to a head in two recent high profile cases, only one of which was before SCOTUS. The case heard by SCOTUS was Matal v. Tam, and it involved the Asian dance band The Slants, which had unsuccessfully sought to register their name as a trademark. The band’s name uses a common racial slur, but their objective in registering the name was “to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity.” (at p. 7) The other case, which had been put on hold by an appellate court pending the decision of SCOTUS in Matal v. Tam, involved the infamous name of the Washington D.C.’s football team, the Redskins. The Trademark Trial and Appeal Board had ruled that this name was disparaging of Native Americans, and ordered it struck from the register. This decision had been upheld by a court in review, and was under appeal. As a result of the decision in Tam, this name will undoubtedly be allowed to stand.

In a nutshell, a unanimous SCOTUS ruled that the disparagement clause prohibited certain forms of speech, and confirmed that “[s]peech may not be banned on the ground that it expresses ideas that offend.” (pp. 1-2) The court easily rejected a series of arguments by the U.S. government to the effect that trademarks were government and not private speech; that trademarks were a form of government subsidy; or that trademark registration was a kind of government program. It came back to the view that the case was simply a matter of “viewpoint discrimination” – in other words, that some speech was being banned by government because of the point of view that it expressed. Justice Alito, writing the majority opinion, firmly stated that a government attempt to prevent the expression of ideas that offend “strikes at the heart of the First Amendment.” (at p. 25) He noted that the clause was so broadly worded that it prohibited disparagement on any basis, suggesting that it could be applied to trademarks such as “Down with racists” or “Down with sexists” (not, of course, that this has ever happened). He characterized it as “not an anti-discrimination clause; it is a happy-talk clause”. (at p. 25) Justice Alito noted that as drafted, the “clause protects every person living or dead as well as every institution.” (at para 26) The court found the provision unconstitutional regardless of whether it was characterized as commercial speech (which carries a lower level of scrutiny than, for example, political expression). He wrote: “The commercial market is stacked with merchandise that disparages prominent figures and groups, and the line between commercial and non-commercial speech is not always clear, as this case illustrates.” (at para 26) He observed that free speech would be endangered if “affixing the commercial label permits the suppression of any speech that may lead to political or social “volatility”.” (at para 26)

This decision ends a long saga involving offensive trademarks in the United States. In the Canadian context, a provision in the Trade-marks Act that effectively prohibits the adoption, use or registration of a trademark that is “scandalous, obscene or immoral” (s. 9(1)(j)) has yet to be properly tested in court or measured against the Canadian Charter of Rights and Freedoms. Given the erratic history of the use of the provision (see my post here), it undoubtedly violates the freedom of expression, and would be difficult to save under section 1 as a reasonable limit, demonstrably justified in a free and democratic society. This raises the question of what other means are available to address offensive speech in trademarks. In the U.S. many have argued that this is an issue for the market to decide; if a mark is sufficiently offensive, consumer repugnance will lead to a failure of the product or service or force the trademark owner to change the mark. Given the long history of sports team names and logos such as those of Washington D.C.’s NFL team and Cleveland’s Major League Baseball team, this is a questionable theory. The disparagement of minority groups is not easily addressed by market forces if the majority is indifferent to or complicit in the offense.

In Canada, the answers may come from outside trademark law. Certainly there are hate speech laws in Canada that might apply to the adoption of highly offensive trademarks. The human rights challenges brought by indigenous activist Douglas Cardinal against Rogers, Major League Baseball and the Cleveland baseball franchise (see my post here) are well worth watching. If these claims eventually succeed, they may provide another route by which some trademarks (at least those associated with the provision of services covered by human rights legislation) may be challenged.

A recent court decision (Assn. for Reformed Political Action Canada v. Ontario) raises some interesting questions about the relationship between the Charter right to freedom of expression and access to information rights.

On June 9, 2017, Justice Labrosse of the Ontario Superior Court of Justice ruled that a statutory exemption to Ontario’s Freedom of Information and Protection of Privacy Act (FIPPA) violated s. 2(b) of the Canadian Charter of Rights and Freedoms, and could not be justified under s. 1. He issued a suspended declaration of invalidity, giving the province 12 months to repair the offending legislation.

Like other access to information regimes in Canada, Ontario’s FIPPA sets a default rule that citizens have a right of access to information in the hands of government and its agencies and departments. This default rule is subject to a number of exceptions that allow government institutions to refuse to disclose information that would, among other things, violate solicitor client privilege, reveal third party confidential commercial information, or adversely impact privacy rights. When a government institution refuses to release all or some of the requested information on one of these statutory grounds, the requesting party can complain to the Office of the Information and Privacy Commissioner (OIPC), which is authorized to resolve such disputes. That, in a nutshell, is the regime established under FIPPA.

In this case, the applicants challenged a provision of FIPPA that was added to the statute in 2012. Section 65(5.7) provides that “This Act does not apply to records relating to the provision of abortion services.” The Applicants argued that this exception violated their right to freedom of expression under s. 2(b) of the Charter by limiting their right of access to information. In a 2010 decision, the Supreme Court of Canada held that there was no constitutional right of access to information; rather, access was a “derivative” right related to the freedom of expression. A denial of access to information could violate the freedom of expression where access “is a necessary precondition of meaningful expression on the functioning of government.” (at para 30) Justice Labrosse’s decision therefore turns on a conclusion that the denial of access to the statistical data at issue in this case prevents “meaningful expression on the functioning of government.” In this case, Justice Labrosse characterizes the information currently available as “less than 50% of some of the statistical information on a matter of important public interest.”(at para 6).

To be clear, the effect of s. 65(5.7) is not to prohibit the disclosure of information relating to the provision of abortion services. Rather, it simply removes decisions about the disclosure of such information from the statutory scheme. The Ontario government argued that freedom of expression rights were not affected by s. 65(5.7) because hospitals and/or the government could still release such information outside of the statutory scheme. Indeed, the government of Ontario had disclosed statistical information about abortion services to the applicant, and had even argued that because this information had been provided, the application was moot.

Prior to 2012, requests for data relating to the provision of abortion services could be made to government departments or agencies that were in possession of such data. For example, the Ministry of Health would have data about the number of abortions billed to OHIP, and those data could be sought through an access to information request. In responding to requests, the department or agency would ensure that the release of data was not subject to any of the exceptions in the legislation. Any disputes would be dealt with by the OIPC. In 2012, FIPPA was amended so as to include hospitals under the legislative scheme. This meant that the public would be able to make freedom of information requests to hospitals for data about their services. It was at this time that the legislation was amended to add s. 65(5.7). Justice Labrosse noted that the government’s justification for the addition of this exception was “to address the concern that disclosure of records relating to the provision of abortion services could pose risks to the safety and security of [hospital] patients, health care providers and other staff.” (at para 59). He characterized this as a pressing and substantial objective. He expressed skepticism, however, about the government’s stated secondary objective which was to “allow hospitals to decide if they wish to voluntarily disclose records relating to the provision of abortion services.” (at para 59). He noted that there was no policy framework put in place for such disclosures, and that no voluntary disclosures had ever been made.

Justice Labrosse essentially found that the exemption of the application of FIPPA to information about abortion services, which, as argued by the government, leaves hospitals and other government bodies free to disclose this information outside the FIPPA scheme, violates the freedom of expression. It is therefore the failure to ensure a framework for access to information, with all of its balancing exceptions and limitations that presents the constitutional problem. In rejecting the sufficiency of assurances by government that information can be provided outside of FIPPA on a voluntary basis, he noted that “Ontario has not pointed to any policy or legislative provision which would allow interested parties to rely on voluntary disclosure by Ontario.” (at para 40)

Justice Labrosse also rejected Ontario’s claims that Charter rights were not affected since statistical data was already available from other sources such as the Canadian Institutes for Health Information (CIHI), billing information voluntarily disclosed by the government, and statistical information available in some scholarly research. The government argued that this information was sufficient to allow for an informed public debate. In his view, significant discrepancies between the government data and the CIHI data meant that the CIHI data was not an adequate substitute. He also added that “requiring interested parties to project forward from dated statistical information published in journals” (at para 42) was also not sufficient to allow for meaningful public discussion.

Although Justice Labrosse accepted that the government had a pressing and substantial concern in protecting the safety and security of patients and health care providers, he found that the s. 65(5.7) went too far. He noted that the exception “includes no criteria to allow for disclosure of records which do not impact the objective of protecting the privacy and safety of patients seeking abortion services” (at para 66). The suspended declaration of invalidity means that the government now has 12 months in which to try to craft an exception that better balances their objectives with the public right of access to information.

It is worth comparing the provision struck down in this case with the new exemption in FIPPA for information relating to medically assisted dying. Medically assisted dying is also controversial and the government was clearly concerned about possible privacy and security implications for individuals and institutions. Yet the solution they crafted is much narrower than the broad exemption for information relating to abortion services. A new section 65(11) provides that: “This Act does not apply to identifying information in a record relating to medical assistance in dying.” This exception is only with respect to “identifying information”, rather than with respect to “records” more generally. Section 65(12) defines “identifying information as information “(a) that relates to medical assistance in dying, and (b) that identifies an individual or facility, or for which it is reasonably foreseeable in the circumstances that it could be utilized, either alone or with other information, to identify an individual or facility”. This provision may well serve as a model for the government as it crafts a new exception to replace s. 65(5.7).

 

 

An interim decision of the Ontario Human Rights Tribunal paves the way for a challenge to the legitimacy of the use of an offensive sports team name and logo during Major League Baseball (MLB) games at Rogers Centre in Toronto. The decision is of particular interest in that it dismisses arguments that the grant of a registered trademark in Canada confers a positive right to use that mark that cannot be interfered with by provincial legislation such as the Ontario Human Rights Code.

The challenge to offensive sports team names and logos is long overdue in Canada. In the United States, after having its own trademark invalidated for disparagement, Washington D.C.’s football team is awaiting the outcome of a U.S. Supreme Court challenge to the constitutionality of the provision of the Lanham Act used to bar the registration of an allegedly offensive trademark in another case. Although Washington’s trademarks are also registered in Canada, their legitimacy has yet to be challenged here. In 2015 Justice Murray Sinclair (now Senator Sinclair), head of the Truth and Reconciliation Commission, called for an end to the appropriation of indigenous names for sports teams and for a cessation of the use of racist names and logos. On the eve of the American League Baseball Championship Series in 2016, architect and activist Douglas Cardinal sought an injunction to prevent the broadcasting of the offensive name and logo of Cleveland’s major league baseball team. He argued that doing so would violate the Canadian Human Rights Act. He was unsuccessful in obtaining the injunction, but his related complaint to the Canadian Human Rights Commission – regarding discrimination in the provision of broadcasting services is ongoing. At the same time, Cardinal launched his complaint before the Ontario Human Rights Tribunal, arguing that when Cleveland’s team plays at Rogers Centre in Toronto, the provision of sports entertainment services (in the form of the games) is carried out in a discriminatory fashion. This is because Cardinal, a baseball fan, is confronted with racism in the form of the team name (the Indians) and logo (a grotesque caricature), particularly on the uniforms of the Cleveland team’s players.

The Cleveland team’s trademarks are registered in Canada. This means that they somehow avoided the prohibition on the registration of trademarks that are “scandalous, obscene or immoral” in section 9(1)(j) of the Trade-marks Act when they were registered in 1988 and 2012 respectively. (For a discussion of scandalous, obscene or immoral marks see my post here). Unsurprisingly, the respondents in this case (Rogers Communications, MLB, and the Cleveland Indians Baseball Company Ltd.) argued that the Ontario Human Rights Code could have no bearing on the use of registered trademarks in Canada. In other words, they maintained that once a trademark has been registered, the owner has a right to use that mark in Canada, and that such use cannot be interfered with by provincial legislation.

Vice-Chair Jo-Anne Pickel made relatively short work of this argument. She found that the Trade-marks Act does not confer a positive right to use a trademark; rather it grants the right to exclusive use of the mark. The distinction is important. The right to exclusive use of a mark protects the trademark owner against the use of an identical or confusing mark by others. But it does not mean that the owner is entitled to use the mark without limitation or restriction. In fact, Pickel noted that restrictions on trademark use are not uncommon; she cited laws restricting the use of tobacco trademarks in advertising as examples of the kind of limitation that can be imposed on the use of trademarks under either federal or provincial legislation. Similarly, a right to use a trademark can be subject to a provincial law of general application such as the Human Rights Code. She brushed aside an argument by MLB that the continued existence of the ‘Edmonton Eskimos’ trademark demonstrated that not all trademark owners are treated the same way under the Human Rights Code. She noted that “The key is that a similar claim could be brought and that it would be treated in the same way as this Application against the Cleveland Team.” Vice-Chair Pickel also noted that an order that would enjoin the use of the team’s name and logo when it played at Rogers’ Centre in Toronto was not the same as an order prohibiting the use of the trademark entirely; the jurisdiction of the tribunal was limited to the scope of application of the Human Rights Code.

Pickel also rejected arguments that the application of the Code in this context would intrude on federal jurisdiction over trademarks. She noted that courts have described the core of the federal power over trademarks as being “to establish a national system for the adoption, use, transfer, and enforcement of rights in respect of registered and un-registered trademarks.” (at para 52). In her view, “the application of the Code to the use of particular trade-marks in the context of baseball games at the Rogers Centre would fall outside this core.” (at para 52). She found that the application of the Code would not frustrate the purposes of the Trade-marks Act, and concluded that nothing in the Constitution deprived the human rights tribunal of jurisdiction over the issue of the legitimacy of the use of the team name and logo during baseball games at Rogers Centre.

The result of this decision is to remove roadblocks to the case moving forward. The adjudicator noted that it would still remain to be determined at the hearing whether baseball games being held at Rogers Centre constitute a service under the Code. Further, it remained to be determined just how each of the three respondents was linked to the delivery of these services for the purposes of the application of the Code.

Because Cardinal is also proceeding with a complaint under the Canadian Human Rights Act (CHRA) relating to the broadcasting of the games (since broadcasting is under federal jurisdiction, it is the CHRA that would apply to those particular services), Pickel expressed concerns about both matters proceeding simultaneously. Because of the considerable overlap in factual and legal issues to be determined, there is a risk that the two tribunals might reach conflicting decisions on key issues of law or fact. She asked the parties to provide her with additional information about the status of the complaint under the CHRA in order to determine whether it would be best to postpone the hearing on the Human Rights Code application until the decision under the CHRA is rendered.

While it is almost certain that nothing will happen quickly as these matters proceed through the notoriously slow human rights tribunal processes, what is important is that something is finally starting to happen around the issue of offensive trademarks for sports teams in Canada. The legal tide is turning against the viability of such marks, creating new pressure for organizations to reconsider the value of clinging to offensive monikers in the name of ‘tradition’.

A recent Alberta Provincial Court decision raised interesting issues about access to law in the internet and open government era. The case involved a prosecution for alleged violations of the Safety Codes Act for non-compliance with the Alberta Fire Code (AFC). The accused, Mr. Khan, was ultimately acquitted of all counts – the alleged breaches of the AFC were related to either an improper conversion of his property into a rooming house or the improper addition of a secondary suite. The court ultimately found that it had not been established that he had done either of these things.

The access to law issues arose because Mr. Khan, in his defence, raised a number of arguments regarding the relative inaccessibility of the Alberta Fire Code (AFC), and thus his inability to know what rules applied to his actions. In particular, he argued that the AFC was insufficiently published and distributed such that it would be a violation of section 7 of the Canadian Charter of Rights and Freedoms to find people bound by its provisions. He also argued that the defence of “Invincible Mistake of Law” applied to him since the AFC cannot be sufficiently known or followed because of the defects in its publication.

The Alberta Fire Code is one of those sets of rules that occupy a rather odd conceptual space. It sets out binding rules that must be followed, but it is not a provincial regulation enacted by the sitting government and published through the normal channels. Instead, it is a code that is developed by (in this case) the National Research Council, through the participation of volunteer experts from relevant stakeholder groups that include government, industry and the public. Codes developed by the NRC (which include the Fire Code, the Building Code, the Plumbing Code and the Enercy Code) are then adopted by provincial and territorial governments. For example, in Alberta, it is the Fire Code Regulation under the Safety Codes Act that adopts the AFC and declares it to be in force in the province.

In the good old analog days, the difference in accessibility between laws, regulations, and codes like the AFC would have been much harder to spot. Anyone wanting to know what the Safety Codes Act or the Fire Code Regulation provided would have had to get themselves to a library that carried legal texts. They would likely have also found a copy of the AFC at the same library. Alternatively, they could have paid the Queen’s Printer for print copies of the statute and the regulation. The provincial department of municipal affairs would have been happy as well to sell them a copy of the AFC. As far as access goes, it was not wildly convenient – but there were both free and for-fee options, each requiring varying levels of effort.

By contrast, today anyone seeking a copy of a law or regulation can find these quickly, for free, and from anywhere they have internet access, either by visiting the website for the relevant legislature or by visiting the one-stop public resource that is CanLII. Mr. Khan’s arguments were all based around the fact that while the Safety Codes Act and the Fire Code Regulations are publicly available online and for free, the AFC is not. The AFC is still only available for free through a visit to a public library that has one in its collection (not all do). Alternatively, one can purchase a hard copy for $220, or pay for access through an online subscription (with a minimum fee of $40 for 10 days of access). The issue raised by Mr. Khan, therefore, was whether this type of access is good enough in the digital and open government era.

Judge Robertson acknowledged that “accessibility is a basic requirement of the law and forms an important fundamental of a justice system within a free and democratic society.”(at para 48) However, he found that the manner of publication of the AFC did not offend the principles of fundamental justice. He noted that the Safety Codes Act and Alberta Fire Regulation are widely available free of charge, and provide public notice of the application of the AFC. The AFC itself is available either through public libraries or by paying for access. He rejected the argument that the fees for access violated the Charter, noting that the fees charged were “diverted back to the continued maintenance and updating of the AFC, from which all citizens benefit.” (at para 64) Judge Robertson also noted that no evidence had been led to show that the cost of access would be prohibitive to “a significant percentage of homeowners” (at para 70). Further, he noted that “by the very nature of what it controls, the Fire Code is concerned with those who own capital in the form of real property. These individuals are sufficiently well-off to contemplate renovation of that property. Moreover, the purpose of such renovation would be to gain additional revenue from the use of the property as a multi dwelling unit or rooming house.”(at para 72) He found that in such circumstances, the modest cost of purchasing access to the AFC was unlikely to cause hardship.

Taking into account the fact that charges would only arise where there is non-compliance with the AFC, Judge Robertson also showed little sympathy for any defendant who had not gone through the permitting and inspection process required for renovations and who then argued that the AFC was not freely available. He noted that “Speaking generally, an individual cannot complain about the illegitimacy of secret state laws, regulations and Safety Codes, while at the same time, trying to hide unauthorized renovations or increased use of a property from the state.” (at para 75)

Perhaps most importantly from an open government perspective, Judge Robertson rejected the existence of any legal principle or case law mandating the state to “provide hard copy documents of its laws to all citizens absolutely free of charge.” (at para 76). He noted that obtaining hard copies of laws has always come with a fee; nothing has changed in this regard, even where there is also a free online alternative. As a result, there was no violation of s. 7 of the Charter.

Finally, Judge Robertson ruled that the defence of invincible mistake of law was not available. He noted that the AFC was not a secret document, was available to the public in different ways, and could be accessed both for free at some public libraries as well as at reasonable cost from the government. He noted that both the public permit system and a free inspection service provided by the Calgary Fire Department supported citizens in complying with the provisions of the Code.

Essentially, Judge Robertson finds that the current situation falls within what is constitutionally acceptable for access to laws. This does not mean, however, that accessibility could not or should not be improved. The discussion of the accessibility of the AFC and the fees charged for access was framed by a consideration of the laborious process for drafting and regularly updating safety codes such as the AFC through complex multi-stakeholder processes. While it is understandable that cost-recovery might be an objective of the publication arrangements, and while it is arguable the main market for the AFC will be those engaged in business and thus well-placed to pay the fees, the open government movement has generally pushed back against cost-recovery for data and documents regardless of the time and resources needed to prepare and publish them. Cost-recovery is only one policy factor to consider in a debate or discussion about openness. Other considerations, such as transparency and accessibility could outweigh its importance.

Judge Robertson also noted that the process of co-creation leaves copyright in the AFC shared between the federal and provincial Crowns. This means that the agreement of both levels of government is necessary for the publication and dissemination of the AFC. In other words, the decision to make such a document freely and openly available online is more complicated than it would be if only a single level of government is involved. It is worth noting that the often problematic role played by Crown copyright is the subject of a recent petition by Amanda Wakaruk, who advocates for a reform of Crown copyright when it comes to the publication of government documents. Wakaruk’s petition calls for government documents to be free of copyright restrictions once they are made public.

 

On April 13, 2017 the Federal Government introduced Bill C-45, which will, if passed, legalize the sale and possession of cannabis in Canada. The law will not simply remove criminal sanctions; it will provide a carefully limited framework for the sale and consumption of cannabis. In light of Bill S-5, also before Parliament, and which will introduce plain-packaging rules for tobacco products, it is worth considering the marketing framework for cannabis. It should be remembered that the Report of the Task Force on Cannabis Legalization and Regulation recommended plain packaging for cannabis and related products.

Because of the cautious and measured approach to the legalization of cannabis reflected in the bill, it is not a surprise that Bill C-45 will place significant restrictions on the marketing of cannabis-related products and accessories. For example, under section 17 it will not be permitted to market such products by association with real persons or fictional creatures, through testimonials, in a way that communicates information about price or distribution, or in any manner that would be attractive to young persons (defined as those under the age of 18). Lifestyle advertising is also specifically prohibited.

There are some exceptions to the strict limits on marketing. For example, the Bill permits the use of cannabis-related “brand elements” on something that is not cannabis or a cannabis accessory – although only in certain circumstances. This means that you can put these brand elements on promotional or other items such as t-shirts or ball caps – except of course, that the “thing” on which the brand elements are put must not be associated with young persons, reasonably likely to be appealing to young persons, or associated in any way with a glamorous or interesting lifestyle. As a result, instead of t-shirts and ball caps, it may perhaps be more realistic to find cannabis-related logos on things like pocket protectors.

False and deceptive advertising with respect to cannabis and cannabis-related products is specifically prohibited by section 18 of the Bill. This too is no surprise and not likely to be controversial. False and misleading representations in general are already prohibited under section 52 of the Competition Act. Section 18 will capture, however, claims about things such as “value, quantity, composition, strength, concentration, potency, purity, quality, merit, safety, health effects or health risks” of cannabis products. It will be interesting, therefore, to see where the boundary will be drawn between “false and misleading” advertising and mere puffery.

In these days of porous national borders, particularly in virtual space, the prohibition in section 20 is notable. It reads:

20. It is prohibited to promote, in a way that is prohibited by this Part, cannabis, a cannabis accessory, a service related to cannabis or a brand element of any of those things in a publication that is published outside Canada, a broadcast that originates outside Canada or any other communication that originates outside Canada.

The provision seems oddly worded and raises issues about extraterritoriality. For example, the prohibition in section 20 is not limited to Canadian-based persons or businesses or ones with ties to Canada who engage in such marketing from outside of Canada. Yet its application would surely have to be limited to a person or business with some connection to Canada. Further, it does not say that the publication or communication must make its way into Canada, or, if it is online, must target Canadians in some way.

Section 21 of the Bill would prohibit the use of cannabis-related brand elements, or the name of someone associated with the production, sale or provision of cannabis or related services, in the sponsorship of persons, events, facilities or activities. It will also be prohibited to use cannabis-related brand elements or names of producers or sellers on facilities. None of this is particularly surprising. The Tobacco Act has long placed restrictions on lifestyle advertising in relation to tobacco products, and has also placed limits on sponsorships of events and facilities. Legal challenges to these types of marketing restrictions failed in the case of the Tobacco Act because the enormous public health issues associated with tobacco provided a justification for the government to restrict the expressive rights of tobacco manufacturers in the public interest. Some might argue that the risks/harms associated with consumption of cannabis are less significant than with tobacco – justifying lesser restrictions – but good luck to them. In applying section 1 (the justification provision of the Canadian Charter of Rights and Freedoms) courts have been very deferential to the public policy goals of government. Given that we are moving from criminalization to a limited right to legally sell cannabis and related products, the measures are likely to be found to be reasonable limits demonstrably justified in a free and democratic society. In any event, it is not a total ban on marketing. The bill creates an exception for “informational promotion or brand-preference promotion”, so long as such promotions are carried out in prescribed places and in a prescribed manner (to be determined by regulations) or are carried out in ways that are careful to ensure that the messages do not reach “young persons”. Point of sale promotion is also permitted, so long as it is limited to information about availability and price.

The Bill also hints at further restrictions, the boundaries of which will not be clear until accompanying regulations are drafted. Section 19 prohibits the use of “any term, expression, logo, symbol or illustration” that is specified in the yet-to-be-drafted regulations if such use is in the promotion of cannabis, or cannabis-related products or services. It is not clear if these regulations might restrict, for example, all logos – in other words limiting available trademarks to word marks. Clearly, the limits on usable terms and expressions will also have an impact on the available word trademarks for cannabis products. Since these products have not been legal up until this point, it is not as if s. 19 and its accompanying regulations will deprive existing trademark holders of the rights to use established marks. Instead, the effect is more likely to set parameters for the use of language and images in trademarks and on packaging. While this is a restriction on the freedom of expression, it is one that may well be considered minimally impairing by the courts.

Sections 25 to 28 of the Bill nevertheless make it clear that there will be restrictions on the packaging of cannabis and cannabis-related products. It will be necessary to wait for the regulations to know just how extensive these restrictions will be. Those already listed in the bill are similar to the restrictions discussed above regarding marketing more generally. There is also a restriction in s. 28 that is similar to that in s. 19. It places limits on the use of certain terms, logos and so on, as may be set out in the (awaited) regulations. Some have wondered whether the regulations might actually introduce plain packaging, as was recommended by the Task Force on Cannabis Legalization and Regulation. Plain packaging, (as I discuss here), substantially restricts the use of trademarks and other brand elements on tobacco packages, and mandates the use of a plain colour and graphic health warnings. Yet there are notable differences in the wording of Bill C-45 when compared to Bill S-5. Bill S-5 prohibits, in section 5.3 the sale of any tobacco product that bears a marking that is not authorized by the regulations. By contrast, Bill C-45 provides that its regulations will list terms, expressions and logos that may not be used. There is a clear difference between prescribing what can be used and listing what may not be used. If Bill C-45 is meant to introduce plain packing via the regulations, it seems oddly worded for this purpose.

A final provision worthy of note is found in section 16(a), and is an attempt to balance the marketing restrictions with the freedom of expression. It provides that the restrictions on marketing do not apply

(a) to a literary, dramatic, musical, cinematographic, scientific, educational or artistic work, production or performance that uses or depicts cannabis, a cannabis accessory or a service related to cannabis, or a brand element of any of those things, whatever the mode or form of its expression, if no consideration is given, directly or indirectly, for that use or depiction in the work, production or performance;

Thus it will not be prohibited to show persons in films or on television consuming cannabis or using cannabis-related accessories (no doubt to the relief of the Trailer Park Boys) so long as there is no product-placement or other marketing dimension to the depictions.

Copyright law is meant to provide limited monopoly rights to creators of works in order to serve the public interest. That public interest is in providing incentives to create new works and to disseminate them publicly. A recent Ontario Supreme Court decision raises the issue of whether the application of Canadian copyright law in the digital context is properly adapted to these purposes.

Trader Corporation v. CarGurus Inc. involved a dispute between two companies that provide digital marketplaces to consumers searching for new and used vehicles. Trader is the incumbent company in Canada, and operates digital marketplaces at autotrader.ca and autohebdo.net. CarGurus is a well-established American company that entered the Canadian market in early 2015. Both companies engage in very similar businesses – their websites provide listings of cars that are available for sale, complete with photographs of those vehicles. In the U.S., CarGurus populates its website with data from commercial partners that provide it with listings from dealers; it also scrapes car dealer websites for additional listings. Copyright law is not a practical barrier to this latter practice since most dealers are happy with the added publicity for the cars they sell. After all, the product is not the listing, but rather the car. If a dealer objects to the listing appearing on CarGurus’ site, CarGuru will remove it. On entering the market in Canada, CarGurus adopted a similar business model.

One difference between the context in the US and in Canada – a difference that was apparently not known to CarGurus – is that in Canada, Trader offers dealers the option to have a Trader’s trained photographer take photos of their cars for the dealer listings. Most dealers take their own photos; the Court found that Trader’s photos accounted for only 5% of the total number in Canadian dealer listings. Yet, though few in number, these photos are significant. Unlike the context in the US, where dealers owned copyright in their photos and were unlikely to object to these photos being used by CarGurus to reach a broader market for the cars, in Canada, Trader – a digital marketplace – was in a position to object to the use of its photos by a competing digital marketplace when dealer listings were scraped. This key difference between the US and Canadian contexts was not known to CarGurus at the time it commenced operations in Canada.

In addition to operating its digital marketplaces, Trader also licenses its data to other companies, including competing websites. When CarGurus entered the Canadian marketplace, Trader sent it a copy of its license agreement. However, CarGurus decided not to license the data because there were “a number of terms that were of great concern to CarGurus as they were designed to prevent CarGurus from effectively competing with Trader in the Canadian marketplace” (at para 12, citing testimony of CarGurus’ Senior Vice-President of Business Development.) CarGurus, confident in its US business model, proceeded on the assumption that individual dealers owned the copyrights in their photographs, and that they could deal with any objections on a dealer-by-dealer basis. Instead, they were sued by Trader.

In pursuing CarGurus, Trader sought three main things: a declaration that CarGurus had infringed its copyright; statutory and punitive damages for infringement; and a permanent injunction preventing CarGurus from using Trader’s photos.

The issue of copyright infringement was relatively straightforward. Photographs are copyright-protected works. CarGurus argued, without success, that Trader’s photos lacked sufficient originality, as the photographers had been trained to take photos in a particular way and according to specifications and thus did not independently exercise the skill and judgment required to meet the threshold for originality. The Court noted that “the fact that the photographers receive training and follow standardized procedures does not eliminate the use of their skill and judgment in taking the photos, nor does it reduce the exercise of taking the photos to a simple mechanical exercise.” (at para 24) Justice Conway also rejected the argument that there had been a merger of idea and expression in the photos of cars. She stated: “I do not consider that there is such a limited number of ways to photograph vehicles for sale that affording Trader copyright protection would somehow give it a monopoly on photographing vehicles for sale.” (at para 25)

Having established that Trader had copyright in its photographs, the next issue was whether there was a viable defense to infringement. CarGurus first argued that its use was fair dealing. Justice Conway accepted that the copying could be for the statutory purpose of “research” when considered from the perspective of the end user who is searching for a car to purchase. However, she found that CarGuru’s dealing with the works could not be characterized as “fair”. This was because the photos were widely disseminated over the internet, and because CarGurus used the photos in their entirety. Further, she found that CarGurus had alternatives to the dealing – it could have taken its own photographs of the cars. Justice Conway found that the ultimate effect of CarGurus’ use of the photos “was to compete squarely with Trader in the Canadian digital marketplace arena.” (at para 39) As a result, she ruled that the fair dealing defense was not available.

CarGurus also argued that it should benefit from the relatively new statutory defense for operators of “information location tools”. Section 41.27 of the Copyright Act limits a plaintiff’s remedies to an injunction where a suit is brought against an operator of “any tool that makes it possible to locate information that is available through the Internet or another digital network.” As Justice Conway noted, the exemption was added to the Act in 2012 to protect providers of such tools because of the public interest in being able to easily “use and navigate the internet” (at para 43). Justice Conway – the first judge to interpret this provision – found that CarGurus did not qualify for the exception because their site did not help users locate information on the internet. While browsers allow users to search for content and provide links to relevant content (and thus qualify as information location tools) CarGurus located information and gathered it on its own website and then made it available to users. She ruled that this type of activity fell outside the exception. She noted that initially CarGurus did not even provide the dealer name and information associated with different listings; to access these, the user had to use CarGurus as a go-between. It did eventually provide information on the dealers, including the URLs for their websites. However, Justice Conway noted that “while the addition of that information might have assisted the user in conducting its own additional searches or contacting the Dealer where the vehicle was located, CarGurus was still not providing a tool that enabled the user to get the online location of that vehicle information.” (at para 50).

Trader sought statutory damages for infringement. In the case of commercial infringement, the statutory damages provisions allow for a range of damages between $500 and $20,000 for all infringements relating to each work. Because the court had found that CarGurus had copied 152,532 of Trader’s photographs, even using the lowest amount in the range would lead to an award of over $76 million dollars. This is an outrageous amount of money in the circumstances, and so Justice Conway used her judicial discretion, provided for in s. 38.1(5), to lower the amount of the statutory damages award. She noted that “Trader has suffered no monetary damages and has lost no business as a result of the infringement.” (at para 56).

Justice Conway took into account a number of factors in adjusting the statutory damages award. She noted that CarGurus did not scrape data from Trader’s site; rather it scraped data from the sites of dealers. It used a business model it had used successfully in the US, and had sought legal advice before entering the Canadian market. It was unaware that some of the photos it was scraping were taken by Trader employees – and in fact, she noted that Trader had not apprised CarGurus of this fact until well into its back and forth with CarGurus over its activities. In Trader’s initial contacts with CarGurus in June 2015 it had asserted a violation of copyright in its autotraders.ca site; the issues regarding the photographs were not raised until December 2, 2015. She also took into account the fees charged by Trader under its license agreements for use of all of its photographs – whether its own or those supplied by dealers. She noted that had CarGurus entered into this agreement it would have had to pay only $17,535 for the photos during the infringement period. She also noted that during the relevant period CarGurus had not made a profit in Canada. She nevertheless expressed the view that CarGurus did not carry out appropriate due diligence in seeing whether its business model was transferable from the US to Canada. In the end, she awarded statutory damages in the amount of $2 per photo, for a total of $305,064. She declined to award punitive damages.

Justice Conway also declined to order a permanent injunction against CarGurus. She noted that the company had already removed all of Trader’s photos from its site. It had also undertaken not to reproduce other Trader photos in the future provided there was a way for it to identify which photos are those of Trader. Rather than continuing to scrape dealer websites, CarGurus was now obtaining its photos from “feed providers” who had already been told not to provide any Trader photos to CarGurus. In declining to issue the injunction, Justice Conway made the point that “the practical effect of any such injunction would be for CarGurus to clear with Trader in advance the rights to any Canadian photos it wishes to use, or enter into a license agreement with Trader on mutually acceptable terms.” (at para 70). She agreed with counsel for CarGurus that this would effectively force CarGurus “to enter into Trader’s syndication agreement or cease operating in Canada.” (at para 70).

This case raises – but does not really confront – interesting issues around the enforcement of copyrights in publicly available content on the internet. There are very clear tensions here between protection against unfair competition and the suppression of competition in the marketplace, where the scraping of content has indirect and immaterial effects but the enforcement of copyright can hamper or limit competition. It is not that Justice Conway’s decision is unsupportable in law – it offers an eminently reasonable interpretation of the applicable provisions. The question is whether the law finds the right balance. As Justice Conway notes, Trader could not demonstrate actual losses as a result of CarGurus’ conduct. The car dealers whose cars were the subject of the photos were not prejudiced; and none of the scraped content was taken from Trader’s site. The takeaway for companies in a similar position to Trader might be that they should deliberately salt online sites with some of their own copyright protected content (as little as 5% of overall content is clearly enough) in order to stifle the efforts of data aggregators to build independent marketplaces. It is a way to use copyright law to achieve purposes that have nothing to do with protecting creators of works or providing incentives to create new ones. It is not clear that the result is in the public interest – and, to return to the opening of this post – it is the public interest that copyright is ultimately meant to serve.

Tuesday, 04 April 2017 15:50

Privacy and IMSI Catchers

A major investigative report by Brigitte Bureau of Radio Canada (CBC English language version here) has revealed what has long been suspected – that Canadian police forces are using IMSI Catchers to harvest substantial amounts of telecommunications data with uncertain oversight and no transparency. The issue is one that should trouble all Canadians, reminding us not to become complacent about the health of our free and democratic society.

The cell phones we carry with us are in constant quiet interaction with nearby cellphone towers – ensuring a quick connection when we need one. As part of this process, our phones communicate their unique identifiers to these towers. An IMSI catcher (also known as a Stingray) will simulate a cell phone tower and will encourage all cell phones in the area to communicate with it. As it does so, it harvests and stores these identifiers. In this way, data is collected about phones in the vicinity, which can, of course, be ultimately linked to specific individuals. Although a police force may deploy an IMSI catcher in the context of a specific investigation with a target suspect or suspects in mind, the harvesting of data is indiscriminate and will affect all individuals with cell phones in the vicinity. In cities, this can mean thousands of individuals at a time.

While it would be foolish to dismiss the importance of the role played by law enforcement and national security in our societies, it would be equally foolish to passively accept surveillance without the safeguards of oversight, transparency and accountability. The Criminal Code contains an entire section devoted to the rules that govern how law enforcement officials may carry out investigations, including detailed rules governing warrants for the interception of telecommunications, production orders for data, tracking warrants (including tracking of cell phones), and general warrants. These provisions require police to go before a judge or a justice of the peace to make their case for the surveillance, and to have the boundaries of the search established. This authorization procedure acts as a safeguard to ensure a proper balance between the rights of individuals and the collective interest, and to ensure that surveillance does not become routine, ubiquitous, and unrestrained. Unfortunately, there remain question marks around the application of these provisions to technologies such as IMSI catchers: some question whether a warrant is need at all (see discussion below); others argue that the technology merits a lower threshold for obtaining a warrant. In addition, it should be noted that there is no guarantee that any warrant obtained will specify what must happen to the data that is collected about individuals who are not the target of an investigation. In other words, there are no guarantees that such data will be destroyed once it is found not relevant to the particular investigation for which the warrant was obtained.

It has long been suspected that police forces in Canada have been using IMSI catchers in their investigations. Either because such use was being carried out without warrants, or because the warrants remained sealed from public view, this usage has been invisible to ordinary Canadians. It is also quite possible that much of this activity has taken place with no oversight at all. In fact, police forces have been evasive in responding to questions about IMSI catcher use. What the Radio Canada reports reveal is that IMSI catchers are in fact being used in Canada, and that such use is entirely non-transparent. We should be extremely concerned.

Arguments for obscurity around law enforcement use of IMSI catchers have two main threads. The first is that such devices do not impact privacy and therefore warrant neither transparency nor oversight measures. This is nonsense. The IMSI catchers are used in order to detect the location and movement of specific individuals. Beyond this, they capture a vast amount of data that can be used to detect the location and movement of anyone in the area of the IMSI catcher. This has privacy implications not just for those who are the targets of the police investigation but for all who are caught up in the dragnet. Without transparency and oversight no one will know what data about them has been collected by police, to what uses this data is put, or how long it will be retained. The second thread is the assertion that if police disclose what they are doing, the bad guys will stay one step ahead of them. However, it is fairly clear that those engaged in organized criminal activity are well aware of the existence and potential use of IMSI catchers. Transparency does not have to mean making public announcements that an IMSI catcher is currently in use in a particular location. Arguments that transparency will undermine investigations are spurious and should not be used to justify extensive covert use of surveillance technologies by police that impact on tens of thousands of ordinary citizens.

In August 2016, CIPPIC, the Munk School of Global Affairs and the Telecom Transparency Project issued a report (Gone Opaque? An Analysis of Hypothetical IMSI Catcher Overuse in Canada) on suspected but unconfirmed IMSI catcher use in Canada. The report provides a detailed overview of the technology, and examines how the use of IMSI catchers in other countries – including the United States – has been made more transparent and accountable. It is interesting to note that the growing body of law in the US that regulates IMSI catcher use evolved out of a similar cloud of deliberate evasion and obscurity that was brought to public attention by the activities of investigative journalists.

After reviewing the measures put in place in other jurisdictions to provide a legal framework for the use of IMSI catchers, the authors of Gone Opaque highlighted a number of legal safeguards that should be considered by Canadian policy makers. In the first place, the use of IMSI catchers should be subject to judicial oversight through the warrant provisions of the Criminal Code, and the threshold should be set to require police to demonstrate that they have reasonable and probably grounds to believe that an offence has or will be committed, as opposed to the much lower threshold of a “reasonable suspicion”. There should also be transparency mechanisms in place which can include statistical reporting on the incidence and scope of use, as well as the provision of some form of notification to all individuals who have been subject to IMSI catcher surveillance. Gone Opaque also discusses imposing proportionality measures such as limiting the use of IMSI catchers only to serious crimes or where other investigatory measures are not likely to be effective. There should also be limits placed on the scope of data collection, as well as on the retention and re-use of data – particularly data that is not related to the crime under investigation.

There is reason to be concerned that the covert use of IMSI catchers circumvents the safeguards put in place by Parliament in the Criminal Code. The provisions of the Criminal Code that deal with warrants and production orders in the context of data and telecommunications are far from perfect, but they do attempt to provide some measure of transparency and oversight when it comes to the exercise of state surveillance and tracking powers. To the extent that IMSI catchers are used in order to circumvent the Criminal Code procedures, and under the unjustifiable claim that they do not impact on privacy rights, Canadians should be outraged. Canadians should also demand much more when it comes to transparency and accountability around the warranted use of technologies that capture large quantities of personal information of ordinary individuals engaged in their daily activities.

 

 

The furore in Canada over the cancellation of the long-form census and the subsequent elation over its reinstatement in 2016 illustrates that – well – that Canadians get excited about odd things, such as being counted for statistical purposes. Of course, not all Canadians are enthusiastic about the census. Each census period a few objectors refuse to complete the long-form census, and some are even prosecuted for their refusal. While some opposition has been based on the past involvement of defense contractor Lockheed Martin in conducting the census (this involvement apparently ended for the 2016 census), other objections have been linked to privacy concerns. Perhaps because of the extensive measures in place to protect census privacy, these concerns have gained little traction either publicly or in the courts, although they did provide the former conservative government with an excuse to cancel the long-from census.

A recent Federal Court decision considers issues of privacy and the census in a somewhat different context. In O’Grady v. Canada (Attorney General), the objection was not to the census itself, but rather to the secondary use of census data for medical research. The applicant, Kelly O’Grady, objected to an agreement that had been entered into between Statistics Canada and McGill University’s Faculty of Medicine in 2011. This agreement, like others of its kind, provided the legal framework by which medical researchers could use Stats Canada data in population health research. The McGill project seeks to assess infant mortality and newborn health in Canada by linking perinatal outcomes with risk factors related to socioeconomic status, ethno-cultural background, and environmental conditions. The researchers needed to link a sample of births from the national birth record database with data from the 1996 and 2006 national censuses.

The collection and maintenance of census data is governed by the Statistics Act, which also establishes Statistics Canada. Stats Canada does not simply hand over data of this kind to researchers. Under the terms of the agreement with McGill, Stats Canada would make the linkages between the records, and then would provide researchers with access only to de-identified information. Further, only those researchers who were either employees or deemed employees of Stats Canada would have access to the data. Under the Statistics Act, “deemed employees” are individuals who are brought under the umbrella of the Act, who must swear oaths of office that affirm that they will comply with the Act and maintain confidentiality, and who are subject to penalties under the Act for any breaches of their obligations.

The applicant objected to the use of the census data under the terms of the Agreement. She argued that it violated of the Statistics Act and the federal Privacy Act. She argued that census data could only be shared with express consent of those who had shared their personal information, and this had not been obtained. Further, she maintained that under the Privacy Act government institutions can only share information without consent in narrowly limited circumstances, and only where the disclosure is consistent with the purposes for which the information had been collected. She argued that the census information had not been collected for medical or public health research, and therefore could not be disclosed for these purposes.

The applicant had complained to the Office of the Privacy Commissioner in 2012, arguing that her personal information had been improperly used in the study. In a 2014 decision, the Privacy Commissioner agreed that the applicant’s census data constituted her personal information, and also found that census information was being used in the study for purposes that went beyond those for which it was collected. However, the Commissioner had noted that the Statistics Act expressly permitted Stats Canada to use its data in this way. Perhaps more importantly, the Commissioner found that the applicant’s own personal information had not been used in the study. The Applicant had given birth within a period that would have been captured by the study, but she did so in Ontario, and the Ontario data had been excluded from the study because of concerns regarding its quality. The Commissioner concluded that the applicant’s complaint was not well-founded.

The fact that the applicant’s personal information had been excluded from the study was an important factor. The Federal Court found that the exclusion of her data meant that she had not been – nor could she ever be – personally affected by the study, and ruled that she did not have standing to bring this application. Further, Justice Russell noted that “[t]he issues she raises and argues can only really be decided on a set of facts that includes an applicant or applicants who were directly affected, or who may be directly affected by the Study when it is eventually released” (at para 52). He noted that there was, as yet, simply no indication that any personal information had been or would be improperly disclosed as a result of the study. He also observed that there was “no indication that the Applicant’s position is anything more than her own personal position, born of her academic interests and her social activism” (at para 52).

Despite ruling that the applicant had no standing in the matter, Justice Russell nevertheless considered the merits of the application. He found that it was clear that Stats Canada had not disclosed any personal information – whether of the applicant or any other person. Only employees and deemed employees of Stats Canada had access to the raw data for the purposes of creating the data linkages. The linked data was accessible only to employees or deemed employees of Stats Canada. Other members of the McGill research team only saw non-confidential aggregate data. Justice Russell noted that the applicant had provided no evidence to show how the aggregate data could be linked to specific individuals. Although the applicant had argued that postal code data was going to be provided to the researchers in order to enable them to assess environmental factors, Justice Russell ruled that the applicant’s claim that the postal code data could be used to re-identify individuals was nothing more than an assertion. Further, he noted that there was no evidence that any postal code data had been revealed to anyone who was not an employee or deemed employee of Stats Canada.

Justice Russell also considered the argument that the disclosure of the data violated the Privacy Act because it was not for a purpose for which it had been collected. He agreed that the census data was personal information. However, he found that while the specific purpose of using the data for this study was not formed at the time of its collection during the 1996 or 2006 censuses, the purpose of the study “is to compile and analyse statistics related to the health and welfare of Canadians”, and this was a consistent with both the purpose of the census and the mandate of Stats Canada. There was therefore no inconsistency with the terms of the Privacy Act.

Although he dismissed the application, Justice Russell cautioned that this was primarily because it both involved an applicant with no standing and was premature. It was premature in the sense that it was too early to know if any personal information might be improperly disclosed. He stated that his decision “should not prevent anyone whose personal information is inappropriately used or disclosed from bringing the matter before the Court in the future” (at para 86). The bottom line, therefore, is that individuals whose interests are directly affected by inappropriate actions by Stats Canada or by researchers will have recourse to the courts. However, there is little room to raise broader privacy arguments about the use in principle of Stats Canada data in appropriate research.

 

Note: The following are my speaking notes for my appearance on February 23, 2026 before the House of Commons Standing Committee on Access to Information, Privacy and Ethics (ETHI). ETHI is currently engaged in a review of PIPEDA. My colleague Dr. Florian Martin-Bariteau also appeared before the same committee. His remarks are found here.

Thank you for the invitation to meet with you today and to contribute to your study of the Personal Information Protection and Electronic Documents Act. I am a professor at the University of Ottawa, Faculty of Law, where I hold the Canada Research Chair in Information Law. I am appearing in my personal capacity.

We are facing a crisis of legitimacy when it comes to personal data protection in Canada. Every day there are new stories about data hacks and breaches, and about the surreptitious collection of personal information by devices in our homes and on our persons that are linked to the Internet of Things. There are stories about how big data profiling impacts the ability of individuals to get health insurance, obtain credit or find employment. There are also concerns about the extent to which state authorities access our personal information in the hands of private sector companies. PIPEDA, as it currently stands, is inadequate to meet these challenges

My comments are organized around the theme of transparency. Transparency is fundamentally important to data protection and it has always played an important role under PIPEDA. At a fundamental level, transparency means openness and accessibility. In the data protection context it means requiring organizations to be transparent about the collection, use and disclosure of personal information; and it means the Commissioner must be transparent about his oversight functions under the Act. I will also argue that it means that state actors (including law enforcement and national security organizations) must be more transparent about their access to and use of the vast stores of personal information in the hands of private sector organizations.

Under PIPEDA, transparency is at the heart of the consent-based data protection scheme. Transparency is central to the requirement for companies to make their privacy policies available to consumers, and to obtain consumer consent to collection, use or disclosure of personal information. Yet this type of transparency has come under significant pressure and has been substantially undermined by technological change on the one hand, and by piecemeal legislative amendment on the other.

The volume of information that is collected through our digital, mobile and online interactions is enormous, and its actual and potential uses are limitless. The Internet of Things means that more and more, the devices we have on our person and in our homes are collecting and transmitting information. They may even do so without our awareness, and often on a continuous basis. The result is that there are fewer clear and well-defined points or moments at which data collection takes place, making it difficult to say that notice has been provided and consent obtained in any meaningful way. In addition, the number of daily interactions and activities that involve data collection have multiplied beyond the point at which we are capable of reading and assessing each individual privacy policy. And, even if we did have the time, privacy policies are often so long, complex, and vague that reading them does not provide much of an idea of what is being collected and shared, with or by whom, or for what purposes.

In this context consent has become a joke, although unfortunately the joke is largely on the consumer. The only parties capable of saying that our current consent-based model still works are those that benefit from consumer resignation in the face of this ubiquitous data harvesting.

The Privacy Commissioner’s recent consultation process on consent identifies a number of possible strategies to address the failure of the current system. There is no quick or easy fix – no slight changing of wording that will address the problems around consent. This means that on the one hand, there need to be major changes in how organizations achieve meaningful transparency about their data collection, use and disclosure practices. There must also be a new approach to compliance that gives considerably more oversight and enforcement powers to the Commissioner. The two changes are inextricably linked. The broader public protection mandate of the Commissioner requires that he have necessary powers to take action in the public interest. The technological context in which we now find ourselves is so profoundly different from what it was when this legislation was enacted in 2001 that to talk of only minor adjustments to the legislation ignores the transformative impacts of big data and the Internet of Things.

A major reworking of PIPEDA may in any event be well be overdue, and it might have important benefits that go beyond addressing the problems with consent. I note that if one was asked to draft a statute as a performance art piece that evokes the problems with incomprehensible, convoluted and contorted privacy policies and their effective lack of transparency, then PIPEDA would be that statute. As unpopular as it might seem to suggest that it is time to redraft the legislation so that it no longer reads like the worst of all privacy policies, this is one thing that the committee should consider.

I make this recommendation in a context in which all those who collect, use or disclose personal information in the course of commercial activity – including a vast number of small businesses with limited access to experienced legal counsel – are expected to comply with the statute. In addition, the public ideally should have a fighting chance of reading this statute and understanding what it means in terms of the protection of their personal information and their rights of recourse. As it is currently drafted PIPEDA is a convoluted mishmash in which the normative principles are not found in the law itself, but are rather tacked on in a Schedule. To make matters worse, the meaning of some of the words in the Schedule, as well as the principles contained therein are modified by the statute so that it is not possible to fully understand rules and exceptions without engaging in a complex connect-the-dots exercise. After a series of piecemeal amendments, PIPEDA now consists in large part of a growing list of exceptions to the rules around collection, use or disclosure without consent. While the OPC has worked hard to make the legal principles in PIPEDA accessible to businesses and to individuals, the law itself is not accessible In a recent case involving an unrepresented applicant, Justice Roy of the Federal Court expressed the opinion that for a party to “misunderstand the scope of the Act is hardly surprising.”

I have already mentioned the piecemeal amendments to PIPEDA over the years as well as concerns over transparency. In this respect it is important to note that the statute has been amended so as to increase the number of exceptions to the consent that would otherwise be required for the collection, use or disclosure of personal information. For example, paragraphs 7(3)(d.1) and (d.2) were added in 2015, and permit organizations to share personal information between themselves for the purposes of investigating breaches of an agreement or actual or anticipated contraventions of the laws of Canada or a province, or to detect or supress fraud. These are important objectives, but I note that no transparency requirements were created in relation to these rather significant powers to share personal information without knowledge or consent. In particular, there is no requirement to notify the Commissioner of such sharing. The scope of these exceptions creates a significant transparency gap that undermines personal information protection. This should be fixed.

PIPEDA also contains exceptions that allow organizations to share personal information with government actors for law enforcement or national security purposes without notice or consent of the individual. These exceptions also lack transparency safeguards. Given the huge volume of highly detailed personal information, including location information that is now collected by private sector organizations, the lack of mandatory transparency requirements is a glaring privacy problem. The Department of Industry, Science and Economic Development has created a set of voluntary transparency guidelines for organizations that choose to disclose the number of requests they receive and how they deal with them. It is time for there to be mandatory transparency obligations around such disclosures, whether it be public reporting or reporting to the Commissioner, or a combination of both. It should also be by both public and private sector actors.

Another major change that is needed to enable PIPEDA to meet the contemporary data protection challenges relates to the powers of the Commissioner. When PIPEDA was enacted in 2001 it represented a fundamental change in how companies were to go about collecting, using and disclosing personal information. This major change was made with great delicacy; PIPEDA reflected an ombuds model which allowed for a light touch with an emphasis on facilitating and cajoling compliance rather than imposing and enforcing it. Sixteen years later and with exabytes of personal data under the proverbial bridge, it is past time for the Commissioner to be given a new set of tools in order to ensure an adequate level of protection for personal information in Canada.

First, the Commissioner should have the authority to impose fines on organizations in circumstances where there has been substantial or systemic non-compliance with privacy obligations. Properly calibrated, such fines can have an important deterrent effect, which is currently absent in PIPEDA. They also represent transparent moments of accountability that are important in maintaining public confidence in the data protection regime.

The toolbox should also include the power for the Commissioner to issue binding orders. I am sure that you are well aware that the Commissioners in Quebec, Alberta and British Columbia already have such powers. As it stands, the only route under PIPEDA to a binding order runs through the Federal Court, and then only after a complaint has passed through the Commissioner’s internal process. This is an overly long and complex route to an enforceable order, and it requires an investment of time and resources that places an unfair burden on individuals.

I note as well that PIPEDA currently does not provide any guidance as to damage awards. The Federal Court has been extremely conservative in damage awards for breaches of PIPEDA, and the amounts awarded are unlikely to have any deterrent effect other than to deter individuals who struggle to defend their personal privacy. Some attention should be paid to establishing parameters for non-pecuniary damages under PIPEDA. At the very least, these will assist unrepresented litigants in understanding the limits of any recourse available to them.

Thank you for your attention, and I welcome any questions.

The Federal Court of Canada has ordered a Romanian company and its sole proprietor to cease publishing online any Canadian court or tribunal decisions containing personal information. It has also awarded damages against the company’s owner. The decision flows from an application made pursuant to s. 14 of the Personal Information Protection and Electronic Documents Act (PIPEDA). The applicant had complained to the Privacy Commissioner of Canada regarding the activities of the defendant and his website Globe24h.com. The Commissioner ruled the complaint well-founded (my comment on this finding is here). However, since the Commissioner has no power to make binding orders or to award damages, the applicant pursued the matter in court. (Note that the lack of order-making powers is considered by many to be a weakness of PIPEDA, and the Commissioner has suggested to Parliament that it might be time for greater enforcement powers.)

Globe24h.com is a Romania-based website operated by the respondent Radulescu. The site re-publishes public documents from a number of jurisdictions, including Canada. The Canadian content is scraped from CanLII and from court and tribunal websites. This scraping is contrary to the terms of use of those sites. The Canadian court websites and CanLII also prevent the indexing of their websites by search engines; this means that a search for an individual by name will not turn up court or tribunal decisions in which that individual is named. This practice is meant to balance the privacy of individuals with the public interest in having broad access to court and tribunal decisions. Such decisions may contain considerable amounts of personal information as they may relate to any kind of legal dispute including family law matters, employment-related disputes, discrimination complaints, immigration proceedings, bankruptcy cases, challenges to decisions on pensions or employment insurance, criminal matters, disputes between neighbors, and so on. In contrast, the Globe24h.com website is indexed by search engines; as a result, the balance attempted to be struck by courts and tribunals in Canada is substantially undermined.

The applicant in this case was one of many individuals who had complained to the Office of the Privacy Commissioner (OPC) after finding that a web search for their names returned results containing personal information from court decisions. The applicant, like many others, had sought to have his personal information removed from the Globe24h website. However, the “free removal” option offered by the site could take half a year or more to process. The alternative was to pay to have the content removed. Those who had opted to pay for removal found that they might have to pay again and again if the same information was reproduced in more than one document or in multiple versions of the decision hosted on the Globe24h web site.

The first issue considered by the Federal Court was whether PIPEDA could apply extraterritorially to Globe24h.com. In general, a country’s laws are not meant to apply outside its boundaries. Although the Federal Court referred to the issue as one of extraterritorial application of laws, it is more akin to what my co-authors and I have called extended territoriality. In other words, PIPEDA will apply to activities carried out in Canada and with impacts in Canada – even though the actors may be located outside of Canada. The internet makes such situations much more common. In this case, Radulescu engaged in scraping data from websites based in Canada; the information he collected included personal information of Canadians. He then, through his company, charged individuals fees to have their personal information removed from his website. The Court found that in these circumstances, PIPEDA would apply.

It was clear that the respondent had collected, used and disclosed the personal information of the applicant without his consent. Although Radulescu did not appear before the Federal Court, he had interacted with the OPC during the course of the investigation of the complaint against Globe24h. In that context, he had argued that he was entitled to benefit from the exception in PIPEDA which permitted the collection, use and disclosure of personal information without consent where it is for journalistic purposes. There is little case law that addresses head-on the scope of the “journalistic purposes” exception under PIPEDA. Justice Mosely found that the criteria proposed by the Canadian Association of Journalists, and supported by the OPC, provide a “reasonable framework” to define journalistic purposes:

 

. . . only where its purpose is to (1) inform the community on issues the community values, (2) it involves an element of original production, and (3) it involves a “self-conscious discipline calculated to provide an accurate and fair description of facts, opinion and debate at play within a situation.” (at para 68)

Justice Mosley found that “journalistic purposes” required something more than making court decisions available for free over the internet without any value-added content. He also noted that the statutory exception applies only where the collection, use or disclosure of personal information is for journalistic purposes and for no other purpose. Here, he found that the respondent had other purposes – namely to profit from charging people to remove their personal information from the website.

The respondent had also argued that he was entitled to benefit from the exception to the consent requirement because the information he collected, used and disclosed was ‘publicly available’. This exception is contained in PIPEDA and in regulations pertaining to publicly available information. While court and tribunal decisions fall within the definition of publicly available information, the exception to the consent requirement is only available where the collection, use or disclosure of the information relates “directly to the purpose for which the information appears in the record or document.” (Regs, s. 1(d)). In this case, Justice Mosley found that the respondent’s purpose did not relate directly to the reasons why the personal information was included in the decisions. Specifically, the inclusion of personal information in court decisions is to further the goals of the open courts principle, whereas, in the words of Justice Mosley, the respondent’s purpose “serves to undermine the administration of justice by potentially causing harm to participants in the justice system.” (at para 78)

PIPEDA contains a requirement that limits data collection, use or disclosure by an organization to only where it is “for purposes that a reasonable person would consider are appropriate in the circumstances.” (s. 5(3)). Justice Mosely noted that the Canadian Judicial Council’s policies on the online publication of court decisions strongly discourages the indexing of such decisions by search engines in order to strike a balance between open courts and privacy. This led Justice Mosely to conclude that the respondent did not have a bona fide business interest in making court decisions available in a way that permitted their indexing by search engines. Therefore the collection, use and disclosure of this information was not for purposes that a reasonable person would consider to be appropriate.

Having found that the respondent had breached PIPEDA, Justice Mosley next considered the issue of remedies. The situation was complicated in this case by the fact that the respondent is based in Romania. This raised issues of whether the court should make orders that would have an impact in Romania, as well as the issue of enforceability. The applicant was also pursuing separate remedies in Romania, and Justice Mosley noted that a court order from Canada might assist in these objectives. The OPC argued that it would be appropriate for the Court to make an order with a broader impact than just the applicant’s particular circumstances. The number of other complaints received by both CanLII and the OPC about personal information contained in decisions hosted on the Romanian site were indicative of a systemic issue. Justice Mosley was also influenced by the OPC’s argument that a broad order could be used by the applicant and by others to persuade search engines to de-index the pages of the respondent’s websites. Accepting that PIPEDA enabled him to address systemic and not just individual problems, Justice Mosely issued a declaration that the respondent had violated PIPEDA, and ordered that he remove all Canadian court and tribunal decisions that contain personal information. He also ordered that the respondent take steps to ensure that these decisions are removed from search engine caches. The respondent was also ordered to refrain from any further copying or publishing of Canadian court or tribunal decisions containing personal information in a manner that would violate PIPEDA.

The applicant also sought damages for breach of PIPEDA. Damages awards have been a weak spot under PIPEDA. The Federal Court has been extremely conservative in awarding damages; this tendency has not been helped by the fact that the overwhelming majority of applications have been brought by self-represented litigants. In this case, Justice Mosley accepted that the breach was egregious, and noted the practice of the respondent to profit from exploiting the personal information of Canadians. He also noted that the level of disclosure of personal information was extensive because of the bulk downloading and publishing of court decisions. Finally, he noted that the respondent “has also acted in bad faith in failing to take responsibility and rectify the problem” (at para 103). In the circumstances, one might have expected an order of damages far in excess of the modest $5000 ultimately ordered by Justice Mosely. This amount seems disproportionate to the nature of the breach, as well as to the impact it had on the applicant and the extensive steps he has had to take to try to address the problem. Even though recovering any amount from the respondent might be no more than a pipe dream in the circumstances, the amount set in this case would seem to lack any deterrent effect and is hardly proportionate to the nature of the breach.

Overall, this decision is an important one. It confirms the application of PIPEDA to the collection, use or disclosure of personal information of Canadians that is linked to Canada, even where the respondent is located in another country. It also provides clarification of the exceptions to consent for journalistic purposes and for publicly available information. In this regard, the court’s careful reading of these exceptions prevents them from being used as a broad licence to exploit personal information. The court’s reasoning with respect to its declaration and its order is also useful, particularly as it applies to the sanctioning of offshore activities. The only weakness is in the award of damages; this is a recurring issue with PIPEDA and one that may take legislative intervention to address.

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