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Tuesday, 09 December 2014 09:00
Class action law suits for breach of privacy are becoming increasingly common in Canada. For example, the B.C. Supreme Court, the Ontario Superior Court, and Newfoundland and Labrador Supreme Court have all recently certified class action law suits in relation to alleged privacy breaches.
The use of the class action law suit can be a useful solution to some of the problems that plague the victims of privacy breaches. These difficulties include:
1) The lack of any other meaningful and effective recourse for a large scale privacy breach. Complaints regarding a large-scale privacy breach by a private sector corporation can be made to the Privacy Commissioner of Canada under the Personal Information Protection and Electronic Documents Act (PIPEDA) (or to his provincial counterparts in B.C., Quebec or Alberta, depending upon the nature of the corporation and its activities). However, the federal privacy commissioner can only investigate and issue a report with non-binding recommendations. He has no order-making powers. Further, there is no power to award damages. An individual who feels they have been harmed by a privacy breach must, after receiving the Commissioner’s report, make an application to Federal Court for compensation. Damage awards in Federal Court under PIPEDA have been very low, ranging from about $0 to $5000 (with a couple of outlier exceptions). This amount of damages will not likely compensate for the time and effort required to bring the legal action, let alone the harm from the privacy breach. Perhaps more importantly, a few thousand dollars may not be a significant deterrent for companies whose practices have led to the privacy breach. The Privacy Commissioner’s Office has called for reform of PIPEDA to include order making powers, and to give the Commissioner the authority to impose significant fines on companies whose conduct leads to significant privacy harms. Yet legislative reform in this area does not seem to be on the current government’s agenda.
2) The problem of establishing damages in privacy cases. It can be very difficult to establish damages in cases where privacy rights have been breached. For example, although a company’s data breach might affect tens or even hundreds of thousands of individuals, it may be very difficult for any of those individuals to show that the data breach has caused them any actual harm. Even if one or more of these individuals suffers identity theft, it may be impossible to link this back to that particular data breach. While all of the affected individuals may suffer some level of anxiety over the security of their personal information, it is hard to put a dollar value on this kind of anxiety – and courts have tended to take a rather conservative view in evaluating such harm. It simply might not be worth it for any individual to bring legal action in such circumstances – even if they were to succeed, their damages would likely not even come close to making the litigation worth their while.
3) The inaccessibility of justice on an individual scale. Frankly, the majority of Canadians are not in a financial position to take anyone to court for breach of privacy. (Those in province of Quebec might be slightly better off in this regard, as privacy rights are much clearer and better established in private law in that province than they are elsewhere in Canada). It should be noted that those few individuals who have sought damages in Federal Court for PIPEDA breaches have been self-represented – legal representation would simply be too costly given the stakes. A suit for the tort of invasion of privacy or for breach of a statutory privacy tort would be considerably more complex than an application for damages under PIPEDA. Damage awards in privacy cases are so low that litigation is not a realistic solution for most.
In this context it is not surprising that the class action law suit for breach of privacy is catching on in Canada. Such law suits allow large numbers of affected individuals to seek collective recourse. As mentioned earlier, the British Columbia Supreme Court recently certified a class action law suit against Facebook for breach of privacy rights protected under British Columbia’s Privacy Act. The claim in Douez v. Facebook, Inc. related to Facebook’s Sponsored Stories “product”. Advertisers who paid to make use of this product could use the names and likenesses of Facebook users in “sponsored stories” about their products or services. These “sponsored stories” would then be sent to the contacts of the person featured in the story. The court found that between September 9, 2012 and March 10, 2013, 1.8 million B.C. residents were featured in Sponsored Stories. The plaintiffs argued that this practice violated their privacy. Although the issues have not yet been litigated on their merits, the certification of the class action law suit allows the privacy claims to proceed on behalf of the significant number of affected individuals.
In Evans v. Bank of Nova Scotia, Justice Smith of the Ontario Superior Court of Justice certified a class action law suit against the Bank of Nova Scotia. In that case, an employee of the bank had, over almost a five year period, accessed highly confidential personal banking information of 643 customers. In June of 2012, the Bank notified these customers that there may have been unauthorized access to their banking information; 138 of these individuals later informed the bank that they were victims of identity theft or fraud. The bank employee subsequently admitted that he had channelled the banking information through his girlfriend to individuals who sought to use the information for illegal purposes. The lawsuit claims damages for invasion of privacy and negligence, among other things, and argues that the bank should be held vicariously liable for the actions of its employee.
Most recently, in Hynes v. Western Regional Integrated Health Authority, the Newfoundland and Labrador Supreme Court certified a class action law suit against the Health Authority after it was discovered that an employee had improperly accessed 1,043 medical records without authorization. The information accessed included name and address information, as well as information about diagnostic and medical procedures at the hospital. This case is an example of where it may be difficult to assess or quantify the harm suffered by the particular individuals as a result of the breach, as it is not known how the information may have been used. The plaintiffs argued that both the statutory privacy tort in Newfoundland and the common law tort of intrusion upon seclusion were applicable, and that the Health Authority should be held vicariously liable for the acts of its employee. The also argued that the Health Authority had been negligent in its care of their personal information. The court found that the arguments raised met the necessary threshold at the class action certification stage – the merits remain to be determined once the case ultimately proceeds to trial.
What these three cases demonstrate is that class action law suits may give individuals a useful recourse in cases where data breaches have exposed their personal information and perhaps left them vulnerable to identify theft or other privacy harms. Such law suits may also act as a real incentive for companies to take privacy protection seriously. The cost of defending a class action law suit, combined with the possibility of a very substantial damages award (or settlement), and the potential reputational harm from high profile litigation, all provide financial incentives to properly safeguard personal information.
This may be welcome news for those who are concerned about what seems to be a proliferation of data breaches. It should not, however, let the federal government off the hook in terms of strengthening Canada’s private sector data protection legislation and giving the Privacy Commissioner more effective tools to act in the public interest to protect privacy by ensuring compliance with the legislation.
Tuesday, 25 November 2014 09:39
Just over a year ago, in Information and Privacy Commissioner of Alberta v. United Food and Commercial Workers, Local 401the Supreme Court of Canada struck down Alberta’s Personal Information Protection Act (PIPA) on the basis that it violated the freedom of expression guaranteed by s. 2(b) of the Canadian Charter of Rights and Freedom. The case arose after a union was found to have violated PIPA by collecting and using video and photo images of people crossing its picket lines in the course of a labour dispute without the consent of those individuals. The union was ultimately successful in its arguments that the limitations on the collection, use and disclosure of personal information without consent contained in PIPA violated their freedom of expression. (You can read more about this decision in my early blog post here).
As a remedy, the Supreme Court of Canada struck down the entire statute, but put in place a suspension of invalidity for a period of year. This amount of time was considered reasonable for the Alberta legislature to amend the legislation to bring it into conformity with the Charter. The year passed without legislative action, and at the last minute the government scrambled to obtain an extension. The Court granted a six month extension on October 30, 2014.
The Alberta government has now introduced a bill to amend PIPA to bring it into conformity with the Charter. Bill 3 is framed in fairly narrow terms. In essence, it creates a new exception to the general rule that there can be no collection, use or disclosure of personal information without consent. This exception is specifically for trade unions. The collection, use or disclosure without consent is permissible if it is “for the purpose of informing or persuading the public about a matter of significant public interest or importance relating to a labour relations dispute involving the trade union” (proposed new sections 14.1, 17.1, and 20.1). The information collected, used or disclosed must be “reasonably necessary” for that purpose, and, in the circumstances, it must be reasonable to collect, use or disclose that information without consent.
The new provisions attempt to strike a balance between the right to privacy and the freedom of expression of trade unions. While it will now be permissible to collect, use or disclose personal information without consent in the context of a labour dispute, there is no blank cheque. Rather than exempt trade unions from the application of PIPA altogether, the new provisions set out the circumstances in which unions may act, and these actions will be under the supervision of the Office of the Information and Privacy Commissioner (OIPC). A person whose information is collected, used or disclosed without their consent by a union may still complain to the OIPC; the OIPC will get to determine if the union’s purpose was to inform or persuade the public “about a matter of significant public interest or importance relating to a labour relations dispute involving the trade union” This wording is interesting – actions by a trade union taken in support of another trade union may not qualify, nor may actions carried out by a trade union to protest a government’s policies. Further, an adjudicator might decide that the information was collected, used or disclosed in relation to a matter that was not of significant public interest or importance. Whether this exception strikes the right balance is an open question which may arise in the course of some future dispute.
The issue of the balance between the freedom of expression and privacy is an extremely interesting one, and it arises in other contexts under private sector data protection legislation. These competing rights are purportedly balanced, for example, by provisions that exempt journalistic, artistic and literary endeavors from the application of the statute in certain circumstances. However, as the United Food case demonstrates, these exceptions do not necessarily capture all of the actors who may have information of public interest that they wish to communicate. A few years ago I wrote an article about the “journalistic purposes” exception that is found in Alberta’s PIPA, as well as in B.C.’s Personal Information Protection Act and the federal Personal Information Protection and Electronic Documents Act. I argue that this exception may not strike the right balance between the right to journalistic freedom of expression and privacy. In the first place, it is not clear who is meant to be entitled to the exception (what are journalistic, artistic or literary purposes, and who gets to assert them?) Secondly, the exceptions are structured so that once it is decided that the acts in question fall within the exception, there can be no oversight to determine whether the manner in which the personal information was collected, used or disclosed went beyond what was reasonable for the legitimate information of the public.
Although the United Food saga may be approaching its close, the issues around the balance between freedom of expression and privacy are far from being resolved. Expect to see these issues surfacing in cases arising under private sector data protection legislation (as was the case with United Food) as well as in other privacy contexts as well.
Note: I recently posted about a privacy law suit that raised freedom of expression issues. It can be found here.
Thursday, 20 November 2014 11:05
Today a group of Canadian civil liberties organizations launched an interactive map of Canada which allows users to document and display instances of chilling of free expression in Canada. The Censorship Tracker is sponsored by PEN Canada, the B.C. Civil Liberties Association, the Canadian Civil Liberties Association and Canadian Journalists for Freedom of Expression.
Interactive maps offer a great way to visualize information and to situate it in a geographic context. According to a press release issued by the sponsoring organizations, the Censorship Tracker is meant to be “an accessible and reliable resource that Canadians can use to gauge restrictions on free speech in Canada.” The map allows users to view dots reflecting all posted instances of limitations on freedom of expression, or to view instances based upon the type of limitation (suppression of personal correspondence, the banning of books, limits on public protest, and so on). Data can also be filtered based on other criteria such as the source of the threat (government, corporation, media, academic institution, and so on), the method used to limit expression, and the target of the limitation. There is also a filter to allow one to see whether the report of a limitation has been verified. The website allows users to file reports on incidents that can be added to the map.
Of course, one person’s free expression is sometimes another person’s crime, and not all reported examples will be what all Canadians unequivocally consider to be unwarranted limits on free expression. Nevertheless, the goal of the map is both to assist the organizations in responding to threats to freedom of expression by allowing for broad-based, crowd-sourced data collection, and to allow Canadians to access and visualize reported instances.
Published in Geospatial Data/Digital Cartography
Monday, 03 November 2014 13:01
In an interesting decision from the small claims court of Quebec, Google has been held liable for violating the plaintiff’s privacy rights after an image of her sitting on her front steps appeared on Google Streetview.
In Grillo v. Google Inc., the plaintiff, Ms Grillo, testified that she had decided to sit on her front steps briefly one day, while on vacation. She was checking her messages on her smart phone, when she noticed the Google Car driving by, with its mounted camera. It was not until five months later that she first went online to look for her house on Streetview. She was shocked to see herself sitting barefoot and wearing a loose, sleeveless top which revealed part of one of her breasts. Also visible in the image was her car, with the licence plate unblurred, and the civic number of her house.
The plaintiff testified that she was a very private person, and, in fact, had chosen to live where she did because it was a relatively private and untraveled area of the city. After she found the image on Streetview, she testified that she was the butt of a number of jokes at the bank where she worked; her partially exposed breast was particularly commented upon by her co-workers. She testified as to her sense of shame and embarrassment. She immediately complained to the Office of the Privacy Commissioner of Canada, which suggested that she contact Google in order to have them remove the images. She claimed that she tried to do this, using the features available on the Streetview site, but without success. Shortly afterwards, she claimed to have sent two copies of a letter to Google – one to its offices in Washington D.C., and one to its corporate headquarters in California, setting out her concerns, and specifically requesting that her licence plate information be removed. Google claimed never to have received either copy of this letter. Approximately two years later, Ms Grillo sought the assistance of a lawyer, and sent a letter to Google demanding that “all photographs of our client, her breast, her car’s license plate and her civic address” be blurred or removed. The letter also claimed damages in the amount of $45,000. A short time after this letter was received, Google notified Ms Grillo’s lawyer that the images had been blurred.
Ms Grillo initiated a law suit against Google to recover damages related to the display of the images. However, perhaps because she was unrepresented at this point, she initiated her action in Quebec’s small claims court. Because this court has jurisdiction only over claims of $7000 or less, she limited her damage claim to this amount. In terms of the damages she claimed to have suffered, she noted that she had been mocked and humiliated at work, and had left her job at the bank as a result. She had also been on an extended period of sick leave prior to resigning her position – this was due to depression for which she was receiving care. She emphasized that she was a very private person who preferred her anonymity, and who had made choices about where to live and what kind of online activity to engage in (or not) with a view to this desire for privacy and anonymity.
The legal basis for the claim of violation of privacy rights in this case is found both in the Civil Code of Quebec and the Quebec Charter of Human Rights and Freedoms. The Civil Code sets out a right to privacy and identifies a series of acts that are considered to violate that right. One of these is the use of a person’s name or image without their consent for any purpose other than the legitimate information of the public. The Quebec Charter also sets out a right to privacy and to human dignity.
The leading case in Quebec on the right to privacy as it relates to the use of a person’s image is Aubry v. ÉditionsVice-Versa. In this case, the Supreme Court of Canada awarded damages after a magazine published a photograph of a young woman sitting outside on her front steps. The photograph had been taken without her knowledge or consent. Drawing on this decision, Justice Breault explained that a photograph taken of a person in a public space in Quebec could not be circulated without that person’s consent unless the public’s legitimate right to information prevailed over the right to privacy. He noted that in Quebec, the freedom of expression did not trump privacy rights; the two considerations must necessarily be balanced.
In this case, Google argued that Ms Grillo had been sitting on her front steps in plain view of her neighbors or of any passersby. Since she was in public view, it argued, she had no right to privacy. Justice Breault disagreed. He rejected the idea that there was a strict dichotomy between public and private spaces. In this case, he noted that Ms Grillo lived on a quiet street, and that the relative level of privacy on that street was something that was of importance to her. Further, she was not engaged in any sort of public activity: she was on vacation, sitting outside her home. She was entitled to expect that her privacy and her right to control her image would not be infringed by the taking and distribution of a photo without her consent.
Google also argued that Ms Grillo was not identifiable from the photograph because her face had been blurred. However, the court found that the other details in the photograph made her identifiable, and that these other details were, as a result, also “personal information”. Justice Breault noted in particular that the photograph showed her car licence plate, and her house number – details Google admitted had been missed by its blurring algorithm.
Finally, Google argued that the dissemination of the photograph without Ms Grillo’s consent could be justified as it was for the “legitimate information of the public”. In this respect, it argued that its Streetview service was of broad use and interest to the public. Justice Breault rejected “social utility” as a basis for justifying a breach of privacy. It was not enough to argue that Streetview in general served a useful public purpose; it was necessary to show that there was a dominant public interest in the circulation of the plaintiff’s image – an interest that would outweigh the plaintiff’s privacy interest. The court found that no such public interest existed in this case. Thus, Justice Breault concluded that the plaintiff’s right to privacy had been violated.
In considering the amount of damages to award, Justice Breault found that Ms Grillo had not adequately established the extent to which her image had actually been viewed by members of the public. He assumed that the number of viewers would be relatively low, and limited mainly to friends and co-workers. He also found that she had not established a causal relationship between the dissemination of her image on Streetview and the depression that she had suffered. He noted that she had produced no witnesses as to the state of her health. Justice Breault also found it significant that she had waited two years between the time she had discovered the image and the time that she had sent the lawyer’s letter to Google. He noted that the images had been blurred immediately after Google’s receipt of the letter, suggesting that she could have mitigated any harm she suffered by acting much sooner. Nevertheless, Justice Breault accepted that she had been deeply shocked by the publication of the image and that she had been hurt as well by the comments of her co-workers. He awarded her $2250 in damages, along with costs of $159.
Monday, 03 November 2014 11:20
Do you have a reasonable expectation of privacy in the data recorded by your car’s airbag sensing diagnostic module (SDM)? Did you even know your car has an SDM? Two recent court cases highlight important privacy issues related to this technology – and by extension to technology embedded into other consumer products that is capable of recording user information.
Both R. v. Hamilton from the Ontario Supreme Court and R. v. Fedan from the BC Supreme Court are cases involving automobile accidents where police extracted, without a warrant, data recorded on the “black box” associated with vehicle airbag systems. These little ‘black boxes’ are referred to alternatively as sensing diagnostic modules (SDMs) or airbag control modules (ACMs). The devices are installed in cars along with the airbag system. Their recording function is triggered by the sudden deceleration that precedes the deployment of the airbags, and they typically record only a few seconds of data leading up to impact.
It is a violation of s. 8 of the Canadian Charter of Rights and Freedoms for police to conduct a search without a warrant in circumstances where there is a reasonable expectation of privacy. Thus, a key issue in these airbag cases was whether there was a reasonable expectation of privacy in the SDM data, and, in consequence, whether the police should have obtained warrants prior to seizing the devices and extracting the data.
The two courts reached opposite conclusions on this issue. Justice MacDougall of the Ontario Supreme Court found that the accused had a reasonable expectation of privacy in the data, and that his Charter rights were violated when the data was extracted without a warrant. This court found that the SDM was similar to a computer that recorded information about its user. By contrast, Justice Kloegman of the British Columbia Supreme Court found that there was no reasonable expectation of privacy in the SDM data.
The BC Court found that the driver had no reasonable expectation of privacy in the recorded data largely because he did not know that his car was equipped to record such data. As Justice Kloegman explained: “SDMs are a relatively new feature of motor vehicles and it is unlikely that the majority of drivers even know their vehicle is equipped with one or what it does.” (at para 22). In fact, the judge was prepared to distinguish Hamilton on this point – in Hamilton, the accused was an off-duty police officer who knew about such devices, and therefore could be found to have a reasonable expectation of privacy. However, for the court to base a reasonable expectation of privacy on whether or not a consumer realizes that the product they have purchased is recording data about their use of it is hugely problematic, particularly as we move into an era where more and more of our consumer items are “smart”. A reasonable expectation of privacy in recorded data should not depend upon whether the individual knew that their car, fridge, phone, thermostat, or any other consumer item was programmed to record data about their use of the device. One might even argue that the lack of awareness that one’s use of consumer devices leaves a data trail should result in an enhanced expectation of privacy.
The court in Fedan also criticized the finding of the court in Hamilton that the SDM was a kind of onboard computer, thus aligning it with other computing devices in which a reasonable expectation of privacy has been found by the courts. In rejecting the analogy to a computer, Justice Kloegman observed that when there was a triggering event, the SDM would “capture five seconds of data regarding speed, brakes, and seatbelts.” (para 23) She then stated that this was “information generated by the vehicle, not the driver.”(para 23) This too is reasoning about which ordinary individuals should be concerned. This is not data about the vehicle in the abstract (grey, Volvo, 2010); rather, it is data that reveals how the driver was interacting with the vehicle at the time of the accident. The information is clearly information about the driver – as the court in Hamilton found.
In spite of the conclusion by the BC court that the information at issue was not about the driver, the judge did admit that the “driver’s actions in operating the vehicle will cause the SDM to engage.” (at para 23) Nevertheless, she found that this did not engage a privacy interest since “those same actions would likely be visible to the public eye.” (at para 23) This conclusion is based on older case law that finds that there is no reasonable expectation of privacy in events that take place in public view. However, in technology context, there is a much more nuanced understanding of what is publicly perceptible and what is not. Accidents can occur anywhere and in any conditions. In many circumstances, there will be no witnesses. Even where there are witnesses, eyewitness testimony is notoriously unreliable – and it is considerably less precise than technological records. Eyewitnesses, for example, will not be able to provide the very precise details recorded by an SDM regarding the speed of the vehicle, the extent of braking. It is worth noting that the court in Hamilton, found, by contrast that the data in an SDM “is of a qualitatively different type than what an observing member of the public could reasonably observe.” (at para 58)
The starkly different decisions in Hamilton and Fedan illustrate that there are privacy issues here that have yet to been conclusively resolved. The issue of the reasonable expectation of privacy in SDM data is one that is worth following as cases from other provinces in Canada start to emerge. The implications of judicial approaches go well beyond on-board vehicle data recorders and may extend to a wide range of consumer devices equipped with devices that can record even small snippets of data.
Thursday, 09 October 2014 09:28
CTV News has reported on a leaked document that suggests that the federal government will be proposing a very specific amendment to the Copyright Act as part of a future budget implementation bill. Specifically, the government will seek to create an exception to copyright infringement that will allow politicians and political parties to make use of media content in political advertisements without the need to seek permission or to pay licensing fees. Normally, the right to authorize the use of copyright protected content is one of the exclusive rights of copyright holders.
The move by the government is sandwiched between two particular events. The first is an announcement in May of this year by major media outlets that they would resist the use of their content in political advertisements. The second, of course, is the looming federal election expected to take place in the fall of 2015 (and for which the campaign already seems to be well under way).
The proposed amendment raises two broad sets of issues. The first relates to process and the second to the substance of the amendment. On the process side of things, the use of budget implementation legislation as a vehicle for ramming through legislative amendments (sometimes of enormous significance) without the normal opportunity for debate, study, and even revision is part of an ongoing degradation of the democratic process in Canada. Copyright reform has always been a lengthy and hotly contested exercise largely because copyright legislation reflects a complex balancing of interests. These interests are diverse, and they include the interests of authors/creators, owners of copyright, industry actors, disseminators of copyright materials, and the broad range of users of copyright protected works. Exceptions to the rights of owners of copyright are generally a key focus of these balancing exercises. The Copyright Act was the subject of substantial reform in 2012 (including the addition of a number of new exceptions), and is slated for another review in 2017. The addition of a new exception at this point in time smacks of self-interested expediency on the part of politicians.
As a matter of substance, it is difficult to comment directly without the actual text of the amendment. However, I offer up some general observations to highlight the complexity of the issues raised, the potential problems, and the ways in which any such amendment might benefit from greater consideration than a budget implementation bill might warrant.
It should be noted that the use of content without need for a licence is already provided for in a variety of contexts under the fair dealing exceptions in the Copyright Act. Under these exceptions, the use of a work must be for a permitted purpose (which can include news reporting, criticism or comment, parody or satire). Such use must also be considered ‘fair’ – in other words, it is not enough to simply allege a specific purpose, one must also use the work or the extract fairly. It is worth noting that the issue of the use of media content in political advertisements in Canada has never been litigated – thus we do not know whether such use might qualify, in appropriate circumstances, for one of the already existing fair dealing exceptions. A first question, therefore, is whether a new exception is needed.
Any specific exception to allow the use of media content in political advertisements would have to consider and define who would be entitled to make such use (Politicians? Candidates? Potential candidates? Political parties? Interest groups?) and what content is up for grabs (Content from mainstream media outlets? From bloggers? Twitter or other social media?). Certain existing fair dealing exceptions require that the source and author be identified when material is used, and presumably something similar should be required here. Further, one would hope that, as with the other fair dealing exceptions, there would also be the additional requirement that any use made of the content must be ‘fair’. It will be very interesting to see whether this is part of any amendment. The ‘fairness’ of any use of content in political advertisements will be a big issue: a use that misrepresents or takes content out of context would be difficult to justify as fair. But if taking things out of context is the name of the game in political ads, will we see an exception that does not impose a fairness limitation on the use of copyright owners’ content?
Any such exception would also fit within the context of the legislation, which provides for certain moral rights. These are available to human authors (and not to corporate owners) of copyright protected works. They can be asserted to protect the honour and reputation of the author, both in terms of the integrity of their work and the causes or institutions in association with which the work is used. While author-employees may waive their moral rights with respect to their employers, they do not, in so doing, necessarily waive them against the rest of the world. Thus, even with a new exception, it might be possible for journalists whose work is used in ways that affect the integrity of their work or that link them, through their work, to a cause or institution they do not support, might still have a moral rights claim. While it is reassuring to think that the exception is not a blank cheque, moral rights case law in Canada is skimpy, and it is difficult to predict what the role will be of moral rights in this context.
Of course, there is a strong public interest in the free and open exchange of ideas. It can certainly be argued that this amendment will enhance the ability to engage with media stories without the need to seek permission to do so, and that this is a good thing – even if many political advertisements are hardly a shining example of engaged political discourse. Nevertheless, to ram through such an exception to the Copyright Act in a budget implementation bill, without due democratic consideration, and in the face of some fairly serious public policy questions on both sides of the issue, makes a mockery of copyright reform. Canadians may remember that it was only in the 2012 amendments to the Copyright Act that an exception was finally included to make the home recording of televised content legal (!) and then only under a tedious list of conditions and limitations. The wheels of copyright reform move slowly and carefully indeed for ordinary Canadians; they clearly move much faster when political self-interest is engaged.
Tuesday, 07 October 2014 14:10
The Quebec Court of Appeal has released its decision in Trudeau c. AD4 Distribution Canada inc., a case that balances the freedom of expression with the protection of privacy and dignity. This is an increasingly important theme in privacy case law in Canada; it was at the heart of a recent Supreme Court of Canada decision, albeit in a different context.
In Trudeau, the appellant, Stéfanie Trudeau had launched a law suit against the defendant film company after they released a pornographic film that featured a caricature of her in her professional capacity as a Montreal police officer. She had sought an injunction to prevent the distribution of the film, as well as damages in the amount of $100,000. The film produced by the respondents was titled “728 Agente XXX”. It was described as a parody inspired by the conduct of police at the time of the 2012 Quebec student protests. Although the filmmakers did not use her name in the film, and did not hire an actress who resembled her, the character in the film wore her police badge number 728. The number was not chosen at random; the appellant had become notorious following the student protests. The Quebec Superior Court noted, in its decision, that Agent 728 had become famous almost overnight when a video of her pepper-spraying demonstrators circulated widely in both mainstream and social media. Her badge number was also featured a later point in time in a video shown on mainstream and social media that depicted her forcible arrest of a man caught drinking in public in the Plateau area of Montreal. She was at one point suspended from the police force and an internal inquiry was held.
Ms Trudeau claimed that the film violated her right to privacy and her dignity (protected under sections 4 and 5 of Quebec’s Charter of Human Rights and Freedoms), and that they had usurped her name and image in the making of the film. The trial judge had rejected these arguments. On September 12, 2014, the Quebec Court of Appeal upheld this decision. The Court of Appeal agreed with the trial judge that there had been no usurpation of the appellant’s name or image – her name was not used in the film, and the actress who portrayed agent 728 did not resemble her. Although her badge number was used, and although her badge number could be linked to her through the extensive media coverage of the events leading to her notoriety, the Quebec Court of Appeal agreed with the trial judge that this was not enough to give rise to liability. It had to be shown not just that there was a link, but that any link between the appellant and the film violated her right to privacy or her dignity. The trial judge had found that her badge number was not part of her private identity, but rather was part of her public persona as a law enforcement agent. As a result, the caricature or parody in the film was not about her personally, but about her public persona – one that had engaged in highly publicized and controversial acts. The Court of Appeal agreed that her actions as a police officer could legitimately be the object of caricature and critical comment. According to the Court, the right to make a parody such as the film in question falls within the respondents’ freedom of expression. The Court accepted that there are limits on the extent to which a public figure can be subject to parody, but that these limits were not exceeded in this case. Here, according to the Court, the ordinary citizen would not believe that it is the appellant herself that is depicted, in any personal way, but only an effigy. The court found the parody to be so unrealistic that it could not diminish the appellant, in her personal capacity, in the mind of the public.
The appellant also argued that the fact that the film was pornographic was itself a violation of her dignity. The Court of Appeal disagreed, noting that the case did not involve the use of an actual photograph of the appellant in a pornographic context without her consent. The Court confirmed that the pornographic nature of the film did not remove it from the category of parody or caricature – a form of commentary that is protected by the freedom of expression.
Wednesday, 01 October 2014 11:50
Yet another decision regarding official marks highlights the need for reform of this privileged category of marks protected under the Trade-marks Act. In Terrace (City) v. Urban Distilleries Inc., two concurrent owners of the same official mark -- SPIRIT BEAR -- challenged the use by the defendant company of a mark that they claimed infringed their rights in the official mark.
The City of Terrace had requested that the Registrar of Trade-marks give public notice of its adoption and use of the SPIRIT BEAR mark on January 21, 2004. Almost 3 years later, the Kitsaoo Band Council had the Registrar of Trade-marks give public notice of its own adoption and use of the identical mark. This happened because there is simply no mechanism under the Trade-marks Act to evaluate official marks on their merits, or to limit them in cases where they would cause confusion with already existing official marks (or registered trademarks). An initial dispute between the City and the Band Council over their competing marks was resolved by an agreement entered into by the two under which they agreed to share the mark and to jointly licence its use.
The defendant company, Urban Distilleries, manufactures different alcoholic beverages. In 2010 it applied to register the trademark SPIRIT BEAR VODKA, but the City and the Band Council both opposed the application. Urban Distilleries abandoned the application, apparently because it lacked the funds to defend the opposition. Since January 2011, it has sold vodka and gin using the unregistered trademark SPIRIT BEAR.
In August 2013, the City and the Band sought an injunction against Urban Distilleries’ use of the SPIRIT BEAR mark. As part of the remedy they sought an order that Urban Distilleries destroy existing inventory and surrender its profits from the sale of products under the offending mark. Urban Distilleries responded by challenging the validity of the official marks. In particular, it argued that the marks had not been adopted and used prior to official notice being given, and it argued that neither the City nor the Band Council were public authorities within the meaning of subparagraph 9(1)(n)(iii) of the Trade-marks Act. They also argued that their use of the marks was not likely to mislead the public, and therefore was not infringing.
Justice Martineau disposed of the case by considering only the issue of adoption and use of the official marks. He noted that the law requires that such marks be adopted and used prior to the Registrar’s giving of public notice. There is a very low threshold for a finding of adoption. The threshold for “use” is similarly not high: “all that is required for use is that the public authority demonstrate that the official mark was made available for public display prior to publication.” (at para 11) However, he found that in this case, neither the City nor the Band Council could be found to have used the mark SPIRIT BEAR prior to public notice having been given.
In the case of the City, there was evidence that the words “spirit bear” were used on the City’s website. However, he noted that nothing on the site mentioned that these words were a mark associated with goods or services. Internal correspondence from that time regarding the use of “SPIRIT BEAR” was not considered to be sufficiently public. Further, the court found that it was not clear that the words were being used in this correspondence as a mark.
In the case of the Band Council, the court found there was no evidence of public use of the mark by the Band Council as a trademark. There was some evidence of a tourism company that used SPIRIT BEAR in one of its publications and in relation to several tours. However, as there was no evidence of any connection between the tourism company and the Band Council, the court found that this did not support an argument that the mark had been adopted and used by the Band Council at the time that public notice was given. Further, the court was not convinced that the words were used on their own as a trademark (as opposed to as a part of longer mark such as SPIRIT BEAR TOUR).
Because there was no evidence of adoption and use of the mark by either the City or the Band Council prior to public notice being given, the court found that both of the marks were unenforceable, and the suit for infringement must necessarily fail. Justice Martineau observed that the City and the Band Council, armed with appropriate evidence, could ask once again for new public notice to be given of the mark. However, any rights flowing from such a request would only be from the time that the public notice was given. Under the Trade-marks Act, marks that are identical to or confusing with official marks may continue to be used after official notice is given, so long as their use predates the public notice. This is the case for Urban Distilleries – it would be able to continue using its unregistered SPIRIT BEAR marks. However, if a new official mark were to be successfully sought by the City and/or the Band Council, this would freeze Urban Distilleries’ rights to what they were at the time of public notice. This means that Urban Distilleries would not be able to expand its line of offerings under the mark, nor would it be entitled to register its unregistered mark.
The co-existence of identical official marks, the improper granting of public notice, and the arbitrary effects on, in this case, a small business owner, all serve as indicators that the official marks regime is very much in need of reform. (For an earlier posting about another problematic official marks case see here). Private Members’ Bill C-611 is currently before Parliament (the bill is discussed here) and it offers concrete proposals for reform in this area. Let us hope it gets due consideration.
Friday, 26 September 2014 10:20
A year ago in November, the Supreme Court of Canada struck down Alberta’s Personal Information Protection Act (PIPA) on the basis that it violated freedom of expression guaranteed by s. 2(b) of the Canadian Charter of Rights and Freedom. It did so by not appropriately striking the balance between the rights of striking works to express themselves in the context of a labour dispute and the privacy rights of others. In Information and Privacy Commissioner of Alberta v. United Food and Commercial Workers, Local 401, an adjudicator under PIPA had ruled that the Union’s practice of taking photographs and videotapes of people crossing its picket line during a labour dispute – and of using some of the footage on its website – contravened the data protection legislation. (The case is discussed in more detail in an earlier blog post here). The Union countered (ultimately, successfully) that to require it to seek consent to the collection and use of this personal information would infringe its rights to freedom of expression.
Where legislation violates a Charter right, a court has various options. Here, both the Information and Privacy Commissioner of Alberta and the Attorney General of that province had asked the Court to strike down the legislation if it were found unconstitutional, rather than to perform judicial surgery on it. The Court agreed this was the better option, writing: “Given the comprehensive and integrated structure of the statute, we do not think it is appropriate to pick and choose among the various amendments that would make PIPA constitutionally compliant.” (at para 40). The Court added a one year period in which the declaration of the legislation’s invalidity was suspended. This would allow the law to remain operative in the province, giving the legislature what was clearly thought to be ample time to introduce the amendment or amendments necessary to bring the statute into compliance with the Charter.
A one-year suspension of invalidity might suffice where a government is functioning as its citizens have a right to expect. However in an age of increasingly dysfunctional governments the Charter remedy of striking down entire statutes with a one-year suspension of invalidity may be a riskier gambit. It has certainly proved to be so in this case. Recognizing that it cannot get amendment’s through by the November 15 deadline set by the Supreme Court of Canada, the Alberta Government as now asked the Court for an extension. The Court is likely to grant the extension – to do otherwise would result in a state of chaos in Alberta as far as private sector data protection is concerned.
Update Note: On October 30, 2014 the Supreme Court of Canada agreed to a six month extension to the suspension of invalidity.
Monday, 15 September 2014 08:25
A recent decision of the Federal Court highlights the need for reform to the official marks regime under the Trade-marks Act.
As discussed in an earlier blog post, official marks are a kind of ‘super trade-mark’ available to ‘public authorities’ in Canada. A public authority has been interpreted by the courts as an entity that is under government control and that acts for the public benefit. Official marks are not subject to the rigors of regular applications to register trademarks – there is no examination, no opposition proceeding and no need for the public authority to avoid choosing a mark that may be confusing with an already registered trademark. Once the Registrar gives notice of an official mark, it is protected almost in perpetuity – there is no need to renew such a mark, and there is no administrative process by which unused official marks can be removed. Official marks, even if long unused, therefore, remain a barrier to the registration of regular trademarks, since the adoption, use or registration of a mark “so nearly resembling as to be likely to be mistaken for” an official mark is prohibited.
This was the difficulty faced by the applicant in TCC Holdings Inc. v. Families as Support Teams Society. TCC Holdings sought judicial review of a 1996 decision of the Registrar to give public notice of the mark FAST. The request for public notice of the adoption of this mark came from a registered charity. In 2003, the Federal Court of Appeal confirmed that charitable status was not sufficient to make an organization a ‘public authority’ within the meaning of the Act. Thus, registered charities are not entitled to hold official marks and must apply for trademarks in the usual way. However, since the Trade-marks Act provides for no mechanism to remove official marks, the FAST mark remained on the register of trademarks. To make matters worse, the entity that held this official mark had its charitable status revoked in 2006, and was dissolved in 2007. The mark FAST nonetheless remained on the register. Its presence proved a barrier to TCC Holdings, which had applied in 2011 to register the trademark FAST, and was told that its application was barred due to the presence of the official mark.
TCC Holdings was successful in its application for judicial review to have the official mark removed from the register. Ultimately, however, in order to register its mark, it was subject to delays and to the added expense of an application for judicial review to the Federal Court. None of this should be necessary – the official marks regime is broken, and is very much in need of repair.
In the last session of Parliament, a Private Members Bill (Bill C-611) was introduced by Liberal MP Geoff Regan with a view to reforming the official marks provisions of the Trade-marks Act. The Bill was not considered before the session ended, and it is hoped it will receive due attention. Among other things, the bill proposes a 10 year term of protection for official marks. This term may be renewed, but in cases where the mark has ceased to be used, it will fall off the register, clearing the way for trademark registrations. As the TCC Holdings Inc. case shows, reform of this kind is still sorely needed.
Canadian Trademark Law
Published in 2015 by Lexis Nexis
Electronic Commerce and Internet Law in Canada, 2nd Edition
Published in 2012 by CCH Canadian Ltd.
Intellectual Property for the 21st Century
Intellectual Property Law for the 21st Century: