JUNE 2014 INTELLECTUAL PROPERTY & TECHNOLOGY

Canada’s New Anti-Spam Legislation: Are You Ready?The “Promise of the Patent” Argument: Will the Appeal of the Plavix Case to the Supreme Court of Canada Sound the Death Knell for this Invalidity Attack on Patents?18 Year Long Battle Ends in Victory for the Little Guy: Cinar Corporation v RobinsonBig Changes on the Horizon for Canadian Trade-MarksCan a Search Engine Be Held Liable for Defamation?

on record

See other BD&P articles under Publications on our web site www.bdplaw.com

INTELLECTUAL PROPERTY & TECHNOLOGY, EDITOR-IN-CHIEFJames T. Swasonjts@bdplaw.com 403-260-5712

INTELLECTUAL PROPERTY & TECHNOLOGY, MANAGING EDITORRhonda G. Wishartrwishart@bdplaw.com 403-260-0268

GENERAL NOTICEOn Record is published by BD&P to provide our clients with timely information as a value-added service. The articles contained here should not be considered as legal advice due to their general nature. Please contact the authors, or other members of our Intellectual Property & Technology team directly for more detailed information or specific professional advice.

On Record Contents:

1 Canada’s New Anti-Spam Legislation: Are You Ready?

3 The “Promise of the Patent” Argument: Will the Appeal of the Plavix Case to the Supreme Court of Canada Sound the Death Knell for this Invalidity Attack on Patents?

5 18 Year Long Battle Ends in Victory for the Little Guy: Cinar Corporation v Robinson

7 Big Changes on the Horizon for Canadian Trade-Marks

9 Can a Search Engine Be Held Liable for Defamation?

2400, 525-8th Avenue SW Calgary, AB T2P 1G1Phone: 403-260-0100 Fax: 403-260-0332

Intellectual Property & Technology ProfessionalsLawyersBrian W. Borich bwb@bdplaw.com ...................................................................................................... 403-260-0346James T. Swanson jts@bdplaw.com ...................................................................................................... 403-260-5712George A. Wowk gwowk@bdplaw.com ...................................................................................................... 403-260-0130John R. Sanche jsanche@bdplaw.com ...................................................................................................... 403-260-0310

Registered Patent AgentCharles Pigeon cpigeon@bdplaw.com ...................................................................................................... 403-260-0257

If you would like any further information on any members of the team, please feel free to contact the team member(s) directly. You may also refer to our website at: www.bdplaw.com

CANADA’S NEW ANTI-SPAM

LEGISLATION:Are You Ready?

By James T. Swanson

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The Canadian government has introduced new legislation to prohibit the sending of many types of commercial electronic messaging to actual or prospective customers or clients, or other third parties. The legislation has become known as the Canadian Anti-Spam Legislation or “CASL” and applies to a much wider list of messaging than one would normally consider “spam”. This new ant-spam and online fraud legislation also applies to charities. CASL’s application to commercial electronic messages (“CEM’s”) comes into effect on July 1, 2014, with certain other provisions coming into effect later. CEM’s include not only email, but also text, sound, voice or images sent by any means of telecommunication.

Penalties for breach of CASL are significant and include fines up to $10,000,000.00 per occurrence for corporations and $1,000,000.00 for individuals. When CASL comes fully into effect, it will include provisions for search warrants, producing records, injunctions and restraining orders, public shaming by publication of the names of offenders and a right of private action by civil litigation by those affected, which could include class actions. The CRTC, the Competition Bureau and the Privacy Commissioner of Canada will be tasked with the enforcement of CASL.

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Subject to some exceptions, prior express consent will be required to send a CEM to anyone, and that consent cannot be “opt-out” (as is the current telemarketing regime and also common practice with emails), but must be “opt-in”, meaning express consent must be provided. It will no longer be acceptable to send someone a CEM and simply rely on their ability at that time to opt out of receiving further messages. In addition, there is now a prescribed form that must be used for those CEM’s that are still permitted.

While CASL deals with more than just CEM’s, following is a short checklist of some questions to ask when determining whether a CEM is lawful under CASL:

1. Is the message a Commercial Electronic Message? Having regard to its content (including hyperlinks in the message to a website or database, or the contact information contained in it), is it reasonable to assume that its purpose, or one of its purposes, is to encourage participation in a commercial activity? Such messages may include messages that:• offer to purchase, sell, barter or lease a

product, goods, services, land or an interest or right in land;

• offer to provide a business, investment or gaming opportunity;

• advertise or promote any of the above; or• promote a person, including the public image

of a person, who does anything referred to above, or who intends to do so.

Note that a CEM that includes a request for consent to send a message is also considered to be a CEM.

2. Does the message fit within an exception under CASL? There are many such exceptions, some as to consent only (while still requiring the prescribed form) and some as to both form and consent. If the message does not fit within an exception, then express consent and compliance with the statutory form is required. A few exemptions include CEM’s:• sent in response to inquiries, requests

or complaints from the recipient;• sent to comply with a legal obligation

or to enforce a legal right; • required by law; or• sent as the first message following a referral

by a third party who has an existing business relationship with both the recipient and the sender.

3. Does the sender of the message have Implied Consent? Implied consent requires one of the following:• an existing business relationship:

» purchase, sale or barter of goods or services within the previous 2 years, » acceptance of a business opportunity within the previous 2 years, » a written contract in force or expired within the previous 2 years; or » an inquiry or application with respect to purchase, sale, barter or business opportunity within the previous 6 months.

• an existing non-business relationship: » volunteer work for or a donation or gift to a registered charity, political party or organization or candidate for public office within the previous 2 years, or » membership in a club, association or voluntary association (defined in the regulations) within the previous 2 years.

• conspicuous publication of an electronic address:

» provided there is no warning posted with the address that the recipient does not wish to receive unsolicited messages, and the message is relevant to the business function, role or duties of the recipient;

• disclosure by the recipient of “business card” information:

» provided there is no warning regarding unsolicited messages, and the message is relevant to the business function, role or duties of the recipient.

4. If there is no Implied Consent, does the sender have Express Consent? • the consent must be clear;• there can be no pre-checked boxes;• the purpose or purposes for which consent

is sought must be set out clearly and simply;• when requesting the consent the sender

(or person on whose behalf the message is sent): must have included the name by which business is carried on, identification of sender and on whose behalf sent, mailing address and one of telephone number, email address or web address of sender or person on whose behalf the message is sent; and

• there must be a statement indicating that consent can be withdrawn.

Note that the sender not only must have consent, the sender must also be able to produce evidence of that consent. Good record keeping will be key.

5. Is the message in the prescribed form?• it must clearly provide the information

listed in 4 above; and• it must contain a clear and easy, no cost

mechanism for unsubscribing.

Transition PeriodTo permit organizations to obtain express consent, there will be a three year transition period under CASL for existing business and non-business relationships. Basically, implied consent can be relied upon for pre-existing relationships over any time period (not just 2 years) where the relationship included sending CEM’s, provided the recipient does not unsubscribe. Previously obtained express consents will remain valid, subject to revocation of consent. Otherwise, steps should be immediately taken to obtain express consent, and this cannot be done by way of CEM’s after July 1, 2014.

Getting ReadyWith July 1, 2014 quickly approaching, it is time to take steps to help prepare organizations for compliance with CASL. All businesses in Canada that send CEM’s or otherwise come under CASL need to immediately:• appoint responsible individuals to

understand CASL and implement and ensure compliance on an ongoing basis;

• conduct gap analysis and carry out audits as necessary to assess current practices with respect to electronic communications, including with any service providers sending messages on behalf of the business;

• consider what changes are required to current policies, practices, processes and procedures, including any of the foregoing that are automated;

• define and understand what messages and communications are CEM’s;

• review and update privacy policies and revisit the terms of use for any applicable websites or software;

• prepare and implement specific policies for CASL compliance and educate the workforce accordingly;

• obtain or develop any required software or databases for ensuring compliance; and

• discontinue any non-compliant actions.

In order for an invention to receive patent protection, it must be novel, useful and non-obvious.1 To establish usefulness or utility, an invention must provide some sort of useful commercial or industrial function and in certain circumstances, a trace of utility may be sufficient.2 However, while a mere trace is necessary to establish utility, it is not sufficient on its own. This is because the doctrine of promise is embodied in the utility requirement. The doctrine of promise provides that in order to constitute a useful invention, an invention must not only be useful for some purpose but it also must deliver any utility that was promised in the patent specification. The promise of a patent may either be demonstrated or soundly predicted in order to establish utility. Whether this threshold has been met will be evaluated at the time of filing the application for the patent.

While widely used in Patented Medicines (Notice of Compliance) proceedings and actions under the Patent Act regarding pharmaceuticals, the argument of the “promise of the patent” has nonetheless made its way into other spheres of technology.

Bauer Hockey Corp. v Easton Sports Canada Inc.3 and Eurocopter v Bell Helicopter Textron Canada Ltee.4 (“Eurocopter”) are two non-pharmaceutical cases where the argument was raised. In Eurocopter, many of the claims of the patent in issue were found invalid for lack of demonstrated utility or sound prediction. The doctrine of the “promise of the patent” played

a prominent role in this decision as the utility was established by the Court by inferring a promise from the description, including the promise to reduce a number of drawbacks of the prior art.

Sound PredictionThere are three elements necessary to support a finding of sound prediction: (i) a factual basis for the prediction; (ii) an articulable and sound line of reasoning from which the desired

result can be inferred from the factual basis; and (iii) proper disclosure of the first two elements.5

The doctrine of sound prediction exists to support situations where an applicant may be unable to demonstrate that an invention is useful but may be able to make a scientifically (or technologically) credible educated guess. The Supreme Court of Canada (the “SCC”) has explained that the policy rationale as follows:

The doctrine of “sound prediction” balances the public interest in early disclosure of new and useful inventions, even before their utility has been verified by tests (which in the case of pharmaceutical products may take years) and the public interest in avoiding cluttering the public domain with useless patents, and granting monopoly rights in exchange for misinformation.6

The “Promise of the Patent” Argument:Will the Appeal of the Plavix Case to the Supreme Court of Canada Sound the Death Knell for this Invalidity Attack on Patents?By Charles Pigeon and Shanlee von Vegesack, Student-at-Law

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Doctrine of the “Promise of the Patent”The promise of the patent doctrine has proved confusing in Canadian jurisprudence. Recent decisions have resulted in patents, for what appear to be useful inventions, being declared invalid because the promised utility could not be established as of the applicant’s filing date. The promise doctrine is not explicitly found in the Patent Act or in the legislation of foreign jurisdictions (such as the US and the EU). In 2013, the SCC dismissed the opportunity to clarify the doctrine when it denied leave to appeal of the Eli Lilly7 case. In that case, the Federal Court held that the patent in question had a promise that a drug called olanzapine was “substantially better” in the treatment of schizophrenia than other known anti-psychotics. The individual advantages of olanzapine asserted in the comparison with other compounds formed the foundation for the overall promise of the patent. The Federal Court concluded that at the time of filing, there was no sound or articulable line of reasoning that would have led the inventors (from the evidence available at the relevant time) to make the explicit promise of the substantial advantage.

When the Federal Court decision was appealed to the SCC, the SCC denied leave to appeal, perhaps because the Court felt the issue was best left to the legislature to clarify. However, given the confusion surrounding the doctrine and the fact that it has resulted in a higher utility threshold requirement in Canada than in the US and the EU, the time has come for the SCC to address the issue. On January 30, 2014, the SCC granted leave to appeal of the Plavix case.8

The Plavix CaseIn the Plavix case, the trial judge found a patent to be invalid on the basis of inutility. The trial judge found that the patent contained an explicit promise regarding a specific result in humans. While the promise was soundly predicted, the trial judge held that the inventors had not disclosed enough of their factual basis and line of reasoning to satisfy the doctrine of sound prediction.

The Federal Court of Appeal (the “FCA”) attempted to provide some much needed clarification on the promise of the patent doctrine. Firstly, the FCA noted that “if an inventor does not make an explicit promise of a specific result, the test for utility is a mere [trace] of utility. If, on the other hand, the inventor makes an explicit promise of a specific result, then utility will be assessed by reference to the terms of the explicit promise.

The FCA attempted to clarify and add practicality to the promise doctrine by distinguishing between the potential use of an invention and an explicit promise to achieve a specific result. In other words, the FCA pointed out that judges should not try to read a promise into a patent where none exists. The FCA explained that Canadian patents are often based on European priority applications, which (unlike the requirements under Canadian patent law) are required to state in their disclosures how their inventions are capable of industrial application. Thus, the courts should take care to distinguish between statements made in the patent’s disclosure and statements of utility made in the claims. Finally, the FCA stated that “…Courts should not strive to find ways to defeat otherwise valid patents.”

Appeal to the SCCThe Plavix case has not yet been heard by the SCC but it is anticipated that the SCC will finally attempt to clarify the promise of the patent doctrine as well as provide useful guidance on what the threshold actually is for establishing utility. Given the policy considerations outlined above, the SCC may discuss whether Canada should continue to have a higher threshold requirement to show utility than other foreign jurisdictions.

The SCC decision regarding the assessment of the “promise doctrine” will, no doubt, have a considerable impact on pharmaceutical patents but will also impact all other industries, albeit to a lesser extent. Quite possibly, the decision may yield a test for determining the promise of a patent as it did, more than a decade ago in the AZT case, in cementing the test for sound prediction.

Footnotes

1 Patent Act, RSC 1985, c P-4, s 2. 2 Consolboard Inc v MacMillan Bloedel (Sask) Ltd, [1981] SCR 504.3 2011 FCA 834 2013 FCA 2195 Apotex Inc et al v Wellcome Foundation Ltd, 2002 SCC 77 at para 70. 6 Apotex Inc v Wellcome Foundation Ltd, 2002 SCC 77 at para 66. [AZT]7 Eli Lilly Canada Inc v Novopharm Ltd, 2012 FCA 232.8 Apotex Inc v Sanofi-Aventis, 2011 FC 1486 [Plavix].

NewsBD&P is pleased to announce that Charles Pigeon, registered patent agent, has joined the firm’s Intellectual Property & Technology Team. A Registered Patent Agent since 2007, Charles has a background in science having earned both a Bachelor of Science and a Master of Science (Chemistry) from McGill University.

Charles’ focus in patents includes patent prosecution and drafting; assessment of patentability, patent validity and non-infringement; strategic patent asset management and support for patent litigation. Charles enjoys working with clients in various areas of technology with a view to assisting clients in best protecting their intellectual property assets. Charles comes to BD&P from Montreal and is fluent in French.

The Supreme Court of Canada (the “SCC”) in Cinar Corporation v Robinson1 marked the end of Claude Robinson’s 18 year fight against those who copied his idea for a children’s television show. Some of the major issues that the SCC addressed were how to determine whether a party has reproduced a substantial part of another’s work, the role of expert evidence in copyright cases and the appropriate remedy for an infringement of copyright.

BackgroundRobinson’s dream was to create a children’s television show. For years he painstakingly worked to realize his vision for a show entitled Robinson Curiosity (“Curiosity”) which would be about a curious man who lived on a tropical island. Robinson based Curiosity on Daniel Defoe’s 1719 novel Robinson Crusoe as well as his own experiences. Robinson obtained a copyright registration for his work in 1985 and then entered into a partnership with Cinar Corporation to attract investors and promote his show. Robinson’s show never aired.

In 1995, Cinar co-wrote and produced a new children’s television show called Robinson Sucroë (“Sucroë ”). When Robinson saw Sucroë, he believed it was a copy of Curiosity, and he launched a law suit against Cinar for infringement of copyright.

18 Year Long Battle Ends in Victory for the Little GuyCinar Corporation v Robinson

By Heather Tyminski, Student-at-Law

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The Trial Court found that Curiosity was an original work and copyright-protected, that Sucroë’s creators had copied Curiosity and that features reproduced in Sucroë represented a substantial part of Curiosity. The Trial Court accepted expert testimony form a semiologist (one who studies symbols and their meanings) in reaching the decision. The Trial Court awarded damages and costs in the approximate amount of $5 million. The Court of Appeal upheld the Trial Court’s findings of copyright infringement and the admissibility of expert evidence, though it reduced the amount of damages to Robinson.

Issues Before the SCCThe SCC addressed many issues, including:• whether the Trial Court used the correct approach in deciding whether a substantial part of a work was reproduced; • whether the Trial Court gave enough weight to the differences between the two shows;• whether the Trial Court should have relied on the semiologist’s expert evidence; and • whether the remedy was appropriate.

Whether a Substantial Part of a Work was ReproducedOne of Cinar’s points of contention was that the Trial Court applied the wrong test in determining whether Sucroë copied a substantial part of Curiosity. Cinar argued that the Trial Court should have applied the following three-step approach: (i) determine what elements of Curiosity were original within the meaning of the Copyright Act; (ii) exclude non-protectable features of Robinson’s work (ex. ideas, elements from public domain, and general elements common to children’s shows); and (iii) compare what remains of Curiosity after the previous “weeding-out” process to Sucroë, and determine whether Sucroë reproduced a substantial part of Curiosity.

Cinar’s argued approach is similar to the “abstraction-filtration-comparison” approach that the United States uses to assess substantial copying in computer software. The SCC did not exclude the possibility that the abstraction-filtration-comparison approach may be useful in deciding whether a substantial part of some works (like computer programs) has been copied. However, many types of works are not conducive to a reductive analysis. Canadian courts generally apply a qualitative and holistic approach in assessing substantiality. Cinar’s three-step process would prevent this holistic assessment because it would unduly focus on whether each part of Robinson’s work is individually original and protected by copyright law.

The Differences Between Sucroë and CuriosityThe SCC found that the Trial Court gave sufficient weight to the differences between Sucroë and Curiosity. The SCC noted that the question of whether there was substantial copying focuses on whether the copied features constituted a substantial part of the plaintiff’s work, not whether they amounted to a substantial part of the defendant’s work. According to the Trial Court, despite differences between Sucroë and Curiosity, it was still possible to identify features in Sucroë that were copied from Curiosity. Also, these features constituted a substantial part of Robinson’s work in Curiosity.

Relying on Expert EvidenceCinar argued that the Trial Court should not have relied on the semiologist’s expert evidence because it was unnecessary. The semiologist presented evidence that there were latent similarities in how the two works used atmosphere, dynamics, motifs, and symbols to convey meaning. The semiologist’s evidence established a greater degree of copying than might have first been apparent.

The SCC determined that in some cases, it may be necessary to go beyond the lay person’s perspective and ask an expert to put a trial judge in the shoes of “someone reasonably versed in the relevant art or technology.” In this case, the task was to compare an unrealized concept for a children’s show to a finished television show In which case the expert testimony was helpful.

The Appropriate RemedyRobinson received a damages award and 50% of the defendant’s earned profits for an approximate total of $4.5 million. Robinson had also sought for profits from the Sucroë soundtrack. The soundtrack was a contentious issue because it came from an independent creative process — it was not copied from Robinson’s work, but incorporated into the copied materials. However, the SCC granted Robinson an award of part of the soundtrack’s profits because there was no evidence that the soundtrack could have been commercialized in the absence of Curiosity’s infringement.

Implications of the CaseAlthough the SCC does not completely eliminate the United States’ abstraction-filtration-comparison approach to assess substantial copying, the SCC found the United States’ method inapplicable to a copyright analysis of many types of works. It is interesting to note that the SCC suggested that the abstraction-filtration-comparison may be applicable to assessing whether one has copied a substantial part of computer programs. This suggests that the abstraction-filtration-comparison might be more applicable to software copyright issues.

Footnotes

1 2013 SCC 73

Canadian courts generally apply a qualitative and holistic approach in assessing substantiality.

2014 is shaping up to be a year of significant change for Canada’s intellectual property regimes. The Canadian government is preparing to ratify or accede to eight international intellectual property treaties relating to trade-marks, patents, copyright, industrial designs and plant breeders’ rights. Three of those treaties—the Madrid Protocol,1 the Singapore Treaty,2 and the Nice Agreement3—relate to trade-marks. In addition, other proposed legislation will amend the Copyright Act and the Trade-marks Act (“TMA”) to strengthen their respective anti-counterfeiting provisions.

The proposed changes which are the subject of this article are contained in Bill C-31, the 2014 budget implementation bill or “Economic Action Plan 2014 Act, No. 1” (the “EAPA”).4 Bill C-31 contains provisions relating to Canada’s implementation of the Madrid Protocol, the Singapore Treaty and the Nice Agreement and also sets out other amendments to the TMA intended to modernize the TMA and bring its provisions more in line with trade-mark laws in other jurisdictions. This article assumes that Bill C-31 will receive royal assent and the EAPA will become law.

The EAPA will make significant changes to the TMA, aimed at bringing Canada’s trade-marks regime much more in line with those of many other countries through participation in international treaties, and also by changing terminology and processes to match up more closely with those of many of our international counterparts.

International TreatiesA. Nice AgreementThe Nice Agreement established a common classification of goods and services for the purposes of registering trade-marks (the “Nice Classification”). The Nice Classification consists of a list of classes (34 classes of goods and 11 classes of services, currently) and a list of goods and services, all of which are updated from time to time. The TMA will incorporate the Nice Classification in its provisions dealing with confusion between trade-marks, or between trade-marks and trade names; the information to be stored in the register of trade-marks; and, the information required to be included in a trade-mark application, among others.

Big Changes on the Horizon for Canadian Trade-MarksBy John R. Sanche

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Adopting the Nice Classification is certainly a positive step for Canadian trade-mark practice in the global context. However, there may be some growing pains associated with Canada’s adoption of the Nice Agreement and its Nice Classification. The Intellectual Property Institute of Canada (“IPIC”) has noted5 that the trade-marks Registrar will have the ability to require that existing registrations also comply with the Nice Classification. That ability of the Registrar will, at a minimum, cause uncertainty for existing trade-mark owners about whether they will have to incur the cost and time needed amend their registrations.

B. Singapore TreatyThe Singapore Treaty provides standardized trade-mark application and registration procedures for member countries. The Singapore Treaty’s procedures require goods and services to be classified according to the Nice Classification — another reason for Canada to adopt the Nice Classification. The Singapore treaty applies to any kind of marks that can be registered under the law of a particular member country. Notably, it explicitly recognizes a number of non-traditional marks, including three-dimensional shapes, holograms, scents, and tastes. Among the other amendments to the TMA introduced by the EAPA is an expanded list of types of marks that may be registered in Canada that closely mirrors the Singapore Treaty’s non-traditional marks. Becoming a member country of the Singapore Treaty will bring Canada’s processes in line with those of many of its peers, including the United Kingdom, United States, and many European countries.

C. Madrid ProtocolThe Madrid Protocol allows a trade-mark applicant in a member country to file an international trade-mark application based on the application in the applicant’s home country. For one fee and under one international application, the applicant may select multiple member countries and the one international application will apply to all of them. Certain amendments after registration may similarly be applied in all jurisdictions through one procedure. Canadian trade-mark owners who register their marks internationally stand to gain significant savings in both the effort and expense required to register their marks internationally through the implementation of the Madrid Protocol.

Other AmendmentsAt first glance, the obvious impact of the EAPA on the TMA relates to Canada acceding to three international treaties. However, the EAPA contains other amendments to the TMA that will have potentially at least as much impact. Some of the changes are small, but significant. For example, the short title of the TMA will be amended to be the “Trademarks Act” and all references in the TMA to “trade-mark” will now read “trademark”. Similarly, the term “wares” will be replaced with “goods”. Those changes, along with several other changes in the definitions used in the TMA, will bring Canadian terminology much more in line with terminology used in most of its trading partners.

One newly defined term, “sign”, contains an expanded, non-exhaustive list of types of marks, including a three-dimensional shape, a hologram, a scent, and a taste, among others. The definition of “trademark” will be amended to incorporate the defined term “sign”. The two new definitions taken together will result in a much broader set of marks that may be registered as trade-marks.

Another significant EAPA change that does not relate directly to the implementation of the three treaties is the removal of the “use” requirement for trade-mark registration. The information required to be included in a trade-mark application will be the same where the application is for the use or proposed use of a mark, and at the registration stage there will be no requirement to provide a declaration of use or otherwise prove use of the mark. This is a paradigm shift for Canadian trade-mark practice, since proving prior use of a mark has historically been, and currently is, a requirement for registration of a Canadian trade-mark. IPIC has commented5 that the removal of the use requirement will be problematic and should not be included in the amendments to the TMA. The departure in trade-mark practice embodied in the EAPA’s amendments to the TMA may relate to the expanded list of types of marks that may be registered as trade-marks. For instance, the traditional concept of use under the TMA may not translate to non-traditional marks such as a scent or a taste.

ConclusionThe amendments to the TMA included in the EAPA will be major changes to trade-mark law in Canada. For the most part, they will be positive changes. However, any time significant changes are made to long-standing legislation and processes, there will be a period of uncertainty and adjustment. During this period, the courts will interpret new and amended provisions in the TMA and the trade-marks office, trade-mark agents, trade-mark owners and trade-mark applicants adjust to new procedures.

Footnotes

1 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid)

2 Singapore Treaty on the Law of Trademarks (Singapore)3 Nice Agreement Concerning the International Classification of Goods and Services

for the Purposes of the Registration of Marks (Nice)4 Full title: “An Act to implement certain provisions of the budget tabled in Parliament

on February 11, 2014 and other measures”5 See “Submission to the Standing Committee on Industry, Science and Technology

by the Intellectual Property Institute of Canada”, available online at: http://www.ipic.ca/download.php?id=501

5 ibid.

The proposed amendments to the Trade-marks Act will constitute major changes to trade-mark law in Canada.

Can a Search Engine Be Held Liable for Defamation?By Paul Mereau, Student-at-Law

IntroductionA number of cases in recent years have considered whether search engines are publishers in the context of defamation law suits and therefore potentially liable for publishing material of a defamatory nature. This was the issue in the recent Australian case of Trkulja v Google Inc LLC & Anor (No5)1 (the “Google Case”). This article considers the decision in the Google Case and provides an analysis of how a similar case might be decided in Canada and other jurisdictions.

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Background in the Google CaseMilora Trkulja (“Trkulja”), following an incident in Australia in which he was shot, requested that Google take action with respect to certain search results on its website that allegedly associated him with Australian mobsters and organized crime.

Specifically, when Trkulja’s name was searched, the Google “web” search results provided a “snippet” that mentioned the “Melbourne Crime” and linked to an article containing Trkulja’s picture and pictures of mobsters. In the article, Trkulja was quoted as saying “[h]e (the hit man) was offered $10,000 to kill me. I know who sent him and they know I know who they are”.

Similarly, the Google “image” search results returned Trkulja’s picture next to the pictures of a number of known mobsters.

Trkulja brought a defamation law suit against Google, for publishing materials that linked him to the criminal underworld.

The Google Case DecisionThe outcome in the Australian Court was an award of damages against Google in the amount of AUS$200,000, for publishing defamatory statements about Trkulja.

Publication is a necessary element of defamation in Australia, as is the case in Canada and the UK. In determining whether Google had published the materials, the Court examined the role Google played in providing the search results. The Court found that search engines “operate precisely as intended by those who own them” and that Google’s role constituted something more than passively passing on the information. Further, the reasoning in a number of leading English decisions was essentially rejected by the Australian Court. The English decisions held that internet intermediaries, such as Google, are not liable to the extent that they merely played the passive role of facilitating the postings.

Ultimately, on the basis that the search engine operated exactly how Google intended it to operate, the Court affirmed that Google was a publisher and therefore liable for damages.

Approach to Publication by an Internet Intermediary in Other JurisdictionsCanada While there is no case law directly on point in Canada, the recent Supreme Court of Canada (“SCC”) decision in Crooks v Newton2 is likely guiding law on the subject. The defendant in the case had posted a link, imbedded as the plaintiff’s name, to an article that the plaintiff claimed was defamatory. The issue was whether or not hyperlinking to the article constituted publication. The SCC held that the act of inserting a hyperlink to defamatory materials, without implicitly or explicitly adopting the content of the materials, did not constitute publication.

Accordingly, given that the SCC has refused to recognize the intentional act of posting a hyperlink to materials as publication, it would seem inconsistent for it to hold that the automatic return of search results would constitute publication. It is likely that, presented with a case similar to the Google Case, a court in Canada would hold that search results do not constitute publication and the search engine accordingly not liable for defamation.

United KingdomIn Metropolitan International Schools v. Google3, Google was sued for defamation because its search results repeatedly referenced a forum thread with the title “Train2Game new SCAM for Scheidegger”. Scheidegger was the previous name of Metropolitan International Schools, who sued Google for publishing the search results. The Court found in favour of Google holding that:

[Google] cannot be characterised as a publisher at common law. It has not authorised or caused the snippet to appear on the user’s screen in any meaningful sense. It has merely, by the provision of its search service, played the role of a facilitator.4

The approach in the UK is therefore that facilitators, such as Google, are not liable for defamation for merely returning search results.

United States of AmericaIt is likely that the approach in the USA would be similar to that of the UK. Specifically, the text of the federal Communications Decency Act provides a carve-out for “interactive computer services” from being “treated as the publisher or speaker of any information provided by another”. It is unclear whether Google, in the context of “web” and “image” search or the like, would be treated as an “interactive computer service”. However, there is case law suggesting that Google is an “interactive computer service” with respect to its keyword suggestion feature.

Take AwayIn terms of the jurisdictions of Canada, the United Kingdom, the U.S.A and Australia, Australia seems to be the only one in which a search engine, such as a Google, is likely to be held liable for merely returning potentially defamatory search results. While there is no Canadian case law directly on point, Crooks v Newton provides some insight and guidance suggesting that a Canadian court would not find liability for defamation in such circumstances.

Footnotes

1 [2012] VSC 5332 2011 SCC 473 [2009] EWHC 1765 (QB)4 Ibid at para 51

In terms of the jurisdictions of Canada, the United Kingdom, the U.S.A and Australia, Australia seems to be the only one in which a search engine, such as a Google, is likely to be held liable for merely returning potentially defamatory search results.

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