Canadian Technology & IP Law : Canadian Technology Lawyers & Attorneys : Stikeman Elliott Law Firm : IP Law in Toronto, Montreal, Calgary, Ottawa & Vancouver

On March 12, 2013, the European Parliament approved legislation that will see the creation of an online dispute resolution platform for use in disputes between E.U. consumers and traders originating from the online purchase of goods and services.

Specifically, the online platform will allow a party to submit a complaint electronically, inform the respondent party about the complaint, and provide the parties with an electronic case management tool. Once the parties are in agreement, the online platform will transmit the complaint to the alternative dispute resolution entity that the parties have agreed to use

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Justine Whitehead  -

In a recent blog post, we noted that the new Bill C-56 would significantly expand the scope of a registrable trade-mark in Canada.  If passed, the list of items that could potentially be registered a trade-mark would include “a word, a personal name, a design, a letter, a numeral, a colour, a figurative element, a three-dimensional shape, a hologram, a moving image, a mode of packaging goods, a sound, a scent, a taste, a texture and the positioning of a sign.”

However, the nature of the evidence required to prove registrability is deliberately left vague in the proposed revisions, and a revised s. 32 would allow the Registrar to ask for any evidence deemed necessary to establish that a trade-mark is distinctive at the date of the filing of the application for registration. While Canadian standards would, of course, have to be developed, a recent precedential decision of the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) is of interest, as an illustration of the difficulties in proving the requisite acquired distinctiveness to register a scent or flavour trademark.

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Justine Whitehead -

On March 1, 2013, Bill C-56 was introduced in the House of Commons. The majority of Bill C-56 is directed to amendments to the Copyright Act (CA) and the Trade-marks Act (TMA) to add new tools to fight commercial counterfeiting and piracy activities. An overview of these proposed tools, which include new civil and criminal remedies, and new powers for customs officers in respect of counterfeit and pirated goods, is set out below.

New Criminal Offences

Bill C-56 would expand the criminal provisions of the CA and introduce criminal offenses under the TMA. For the CA, Bill C-56 would make it an offence to possess an infringing copy of a work for the purposes of sale, rental, and/or distribution for the purpose of trade or exhibition in public by way of trade. It would also make it an offence to export (or attempt to export) an infringing copy of a copyrighted work for the purpose of sale or rental. (The CA currently already prohibits import in Canada of any infringing copies of a copyrighted work for sale or rental.)

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Justine Whitehead -

On March 1, 2013, Bill C-56 was introduced in the House of Commons. As might be expected from the short title of the proposed act (Combatting Counterfeit Products Act), the majority of Bill C-56 is directed to amendments to the Copyright Act and the Trade-marks Act to add new civil and criminal remedies to curtail commercial counterfeiting activities. Update: The details of these new provisions are reviewed here.

 While the essence of Bill C-56 is clearly directed to counterfeiting, the legislation also proposes significant amendments to the Trade-marks Act (the TMA) that are unrelated to counterfeiting activities. The most significant of these other changes are highlighted below.

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David Elder -

In an apparent attempt to apply pressure to the government to amend the federal private sector privacy law, New Democrat Digital Issues Critic Charmaine Borg recently introduced a private members bill that would introduce mandatory data breach reporting and provide the Privacy Commissioner of Canada with direct enforcement powers.

The government’s own bill to amend the Personal Information Protection and Electronic Documents Act (PIPEDA) was introduced in September of 2011, but Bill C-12, as the bill is known, has not moved forward since that time. 

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David Elder -

Much-anticipated revisions to the originally proposed Electronic Commerce Protection Regulations provide some useful clarifications and additional exemptions with respect to Canada’s Anti-Spam Law (CASL), but many concerns remain with respect to the potential over-reach of the not-yet-in-force law and the unnecessary and burdensome financial and administrative obligations that it may impose on legitimate business activity.

In fact, while the revised Regulations do respond to some of the concerns raised with respect to the previously proposed regulations – and indeed, the Act as a whole - the new Regulations may be more notable for what they don’t include than for what they do cover. 

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Alexandra Stockwell -

As we noted in our post on July 3, the Copyright Modernization Act  had received royal assent, but would not come into force until an Order-in-Council was issued. This has now happened: on November 7, 2012, most of the new provisions of, and amendments to, the Canadian Copyright Act came into force as a result of the publication in the Canada Gazette of Order SI/2012-85. The Order also specified that certain provisions, which relate to the WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty, will come into force when those treaties are ratified by Canada.

A notable exclusion from the Order is the “Notice-and-Notice” regime (the future sections 41.25, 41.26 and 41.27(3) of the Copyright Act), which will only come into force after a consultation process and the establishment of regulations that will be needed to implement the regime. The Canadian “Notice-and-Notice” regime, which differs from the “Notice-and-Take-Down” rules in the United States, will oblige Internet Service Providers (ISPs), after being notified of infringement allegations by a rights holder, to notify the relevant subscriber of the allegations received.  ISPs will also be required to retain records that would enable the identification of the subscriber allegedly engaged in the infringing activity for a period of six months (or one year, if infringement proceedings are commenced in respect of the claimed infringement within six months of the initial notice from the rights holder). Once the regulations are ready, the date when the “Notice-and-Notice” provisions come into force will be published in a separate Order-in-Council.

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Ian P. Goodman -

On Thursday, November 8, 2012, a unanimous Supreme Court of Canada issued a decision with significant implications for those wishing to obtain or enforce Canadian patent rights.  Owners of issued patents seeking to enforce such rights should carefully scrutinize the disclosure and claims of their issued patents in light of this decision, and patent applicants should consider this decision when drafting the specifications of new applications.

The case of Teva Canada Ltd. v. Pfizer Canada Inc.  arose out of a Patented Medicines (Notice of Compliance) [PMNOC] proceeding in which Novopharm Limited (now, Teva Pharmaceuticals Limited) sought approval from Health Canada to market and sell a generic version of Pfizer’s Viagra-branded sildenafil tablets.  To obtain such approval, the decision-maker had to be convinced that Pfizer’s patent (the ‘466 Patent) was invalid. However, Teva was unsuccessful at both the Federal Court of Canada and the Federal Court of Appeal, each of which held that Teva’s allegations of invalidity were not justified.

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David Elder -

In an important constitutional case, the Supreme Court of Canada has granted leave to hear an appeal from a decision that found that the application of privacy law to the videotaping of individuals crossing picket lines infringed the Canadian Charter of Rights and Freedoms.

 As we noted in a previous post, the judgment in question considered the activities of a union that had videotaped picketing activity during a strike at an Edmonton casino.  Like other Canadian private sector privacy laws, Alberta’s Personal Information Protection Act (PIPA), generally requires the consent of individuals for the collection, use and disclosure of their personal information, including videotaped images of identifiable individuals.  The union, which did not obtain such consent, videotaped and photographed the picket lines in order to publicize the images of individuals crossing the lines. 

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The Federal government has expanded the list of organizations that are exempt from the Personal Information Protection and Electronic Documents Act (PIPEDA) on the basis that similar provincial legislation sufficiently protects the relevant personal information. As of October 10, 2012, health care organizations subject to Newfoundland and Labrador’s Personal Health Information Act (PHIA) are exempt from PIPEDA because provincial legislation is “substantially similar”.

Newfoundland and Labrador is now the sixth province to be granted an exemption from some or all of Part I of PIPEDA, and the third to enact exempted personal health information legislation.

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David Elder -

Employees in Canada retain some reasonable expectation of privacy in personal data stored on an employer-supplied laptop, even where workplace policies and practices provide that all information stored or generated on such devices is the property of the employer, says the Supreme Court of Canada. However, the implications of this criminal law case remain unclear for private sector employers.

In its judgement in R. v. Cole, on appeal from a decision of the Ontario Court of Appeal, the Court considered the case of an Ontario high-school teacher, on whose school board-supplied laptop a school technician found nude images of a student. The technician copied the photos in question onto a disk for the school’s principal, who seized the laptop and informed police, who took possession of the laptop and disks, then examined their contents. The police did not obtain a warrant before seizing the equipment or examining the contents.

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David Elder -

Although the date on which Canada’s Anti-Spam Legislation (CASL) may come into force is uncertain, the CRTC has issued two bulletins that provide guidance as to how to comply with the new law, once proclaimed in force.

But while some of the new guidance is helpful, other provisions will likely create significant operational concerns for businesses.

The Commission is the body charged with oversight and enforcement of most provisions of the new law, including the core provisions respecting commercial electronic messages (CEMs), alteration of transmission data and the installation of computer programs.  In addition, the CRTC has the power to make regulations under the Act with respect to certain matters.

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Anti-bullying advocates will applaud a recent Supreme Court of Canada decision that paves the way to give young victims of online bullying stronger legal rights. The case of A.B. v Bragg Communications Inc. is notable as it directly pits society’s interest in the protection of children from cyberbullying against freedom of the press and the open court principle.

The facts of the case are straightforward. A 15-year old Nova Scotia girl, identified only as A.B., discovered that someone had created a phony Facebook profile using her name and picture. The picture was accompanied by some unwelcomed commentary about the girl’s appearance along with sexually explicit references. A.B. applied to a Nova Scotia court for an order requiring Eastlink, an internet service provider, to disclose the identity of the person(s) standing behind the IP address used to publish the phony Facebook profile. In order to protect her privacy, A.B. also asked the court for permission to make her application anonymously and for a publication ban on the contents of the fake Facebook profile. Her request to proceed anonymously and under a publication ban were denied by the trial judge and the Court of Appeal but those decisions were partially overturned in this case by the Supreme Court of Canada.

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Research by the Office of the Privacy Commissioner of Canada found that leading websites in Canada are providing registered users’ personal information to third-party websites without their users’ knowledge or consent. The third-party recipients include advertising, marketing, social networking and web analytics websites.

The study found that one out of four websites in the sample regularly disclosed its users’ personal information to third-parties. According to the Privacy Commissioner, the findings raise significant questions about compliance with privacy laws in the online world.

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