Ontario Superior Court creates new privacy tort in revenge porn case

Justine Johnston -

On January 21, 2016, the Ontario Superior Court released its decision in Doe 464533 v D, 2016 ONSC 541, recognizing for the first time the new privacy tort of public disclosure of private facts. The Court’s decision explicitly expands the common law protection of privacy and demonstrates how courts can recognize and provide relief to victims of cyberbullying.

The public disclosure of private facts tort arose from an egregious case of revenge porn cyberbullying. The defendant posted a sexually explicit video of the plaintiff under the user submission section of a pornographic website. When the plaintiff became aware that the video had been posted online, the defendant admitted to uploading it and removed it from the website. Although the video was “removed”, the Court acknowledged that there is no way to know how many times it was viewed or downloaded or if and how many times it may have been copied onto other media storage devices or recirculated. 

 In reaching its decision, the Court recognized the important role technology plays in everyday life, how predators and bullies can use technology to victimize others and the devastating impact cyberbullying has on victims. These ideas were similarly addressed in the 2012 Ontario Court of Appeal decision Jones v Tsige, where privacy rights were identified as worthy of Charter protection and the tort of invasion of privacy in the context of the tort of intrusion upon seclusion was recognized. Following Jones v Tsige, the Court deemed William L. Posser’s American legal article “Privacy” as authoritative and adopted his tort of “public disclosure of embarrassing private facts about the plaintiff,” with minor modifications.

Accordingly, the tort of public disclosure of private facts contains the following three elements: One who gives publicity to a matter concerning the private life of another is subject to liability to the other for invasion of the other’s privacy, if the matter publicized or the act of the publication would be highly offensive to a reasonable person, and is not of legitimate concern to the public.

Here, the Court found the cause of action was made out because  the defendant posted a privately-shared and highly, personal intimate video recording of the plaintiff on the Internet, thereby making a private aspect of the plaintiff’s life public, such that a reasonable person would find highly offensive and there was no legitimate public concern for him to do so. The Court also found the defendant committed the existing torts of breach of confidence and intentional infliction of mental distress. The Court awarded the plaintiff $105,500 in damages and interest, and granted a permanent injunction prohibiting the defendant from contacting the plaintiff or members of her immediate family.

The continuing integration of technology into everyday life has many implications for privacy. The Court’s decision and recognition of the public disclosure of private facts tort covers a gap in the law that will offer recourse to victims of egregious forms of cyberbullying, including revenge porn. 

Supreme Court of Canada addresses important issues in Canadian Copyright Law

Justine Whitehead and Gina Demczuk -

On December 23, 2013, a unanimous Supreme Court of Canada issued its decision in Cinar Corporation v Robinson. The decision provides clarification on a number of important issues in Canadian copyright law, including (but not limited to): (i) the appropriate test for determining if a substantial part of a copyrighted work has been reproduced; (ii) when expert evidence in respect of substantial taking should be adduced in copyright infringement cases; and (iii) several issues in respect of the calculation of damages and accounting of profits.

The Supreme Court decision is the last word in a case that has its genesis in actions undertaken decades ago. Claude Robinson began developing an idea for a children’s television show, The Adventures of Robinson Curiosity (Curiosity), in the early 1980’s. He spent more than a decade after that trying to get the project developed. During this time, Robinson shared his work (which included detailed sketches, storyboards, scripts and synopses), with several of the individual and corporate defendants (including Cinar Corporation).

In 1995, Robinson watched the first episode of a new children’s television show called Robinson Sucroë (Sucroë). He was stunned to see that the program was (in his view) “a blatant copy” of Curiosity.  He then found out that several parties to whom he had given access to his Curiosity project materials were involved in the production of Sucroë, and Robinson and his production company (Les Productions Nilem Inc.) commenced an action for copyright infringement.

Robinson was largely successful at trial: the trial judge concluded that the creators of Sucroë had infringed Robinson’s copyright and awarded damages and costs on a solicitor-client basis.  The decision on infringement was upheld by the Court of Appeal, but some changes were made to the damages awards. The Supreme Court of Canada also upheld the copyright infringement claim, but made some changes to the damages awards. A summary of some of the key parts of the Supreme Court’s decision in respect of the further appeals from the Quebec Court of Appeal is set out below.

The Test for Copyright Infringement

Copyright infringement occurs when a copyrighted work, or any substantial part of a copyrighted work, has been reproduced without the consent of the owner of the copyright. In considering what constitutes a “substantial part” of a work, the Supreme Court noted that it is a “flexible notion”, which is “a matter of fact and degree”.  In fact, the Copyright Act protects authors against both literal and non-literal copying, so long as the copied material forms a substantial part of the infringed work. However, the Supreme Court again cautioned about the need to strike an appropriate balance between giving appropriate protection to the skill and judgement of authors in their expression of ideas, and leaving ideas and elements in the public domain free to all to draw upon.

The trial judge had found that the Cinar appellants copied a number of features from Curiosity, including the character’s visual appearance, personality traits of the main character and other characters in the series, visual aspects of the setting, and recurring scenographic elements. He concluded that, considered as a whole, these features constituted a substantial part of Robinson’s work.

The Supreme Court noted that the trial judge’s conclusion on that point was entitled to appellate deference, since the issue of substantiality is one of mixed fact and law.  Following its decision in Housen v. Nikolaisen (Housen), the Supreme Court confirmed that an appellate court should defer to the trial judge’s findings on substantiality, unless those findings are based on an error of law or palpable and overriding errors of fact. The Supreme Court held that the trial judge committed no reviewable errors in finding that Sucroë reproduced a substantial part of Curiosity

The Cinar appellants had argued that the trial judge erred in not applying a three step approach requiring him to (i) determine what elements of Curiosity  were original, within the meaning of the Copyright Act; (ii) exclude non-protectable features of Robinson’s work, such as elements drawn from the public domain, and generic elements common place in children’s television; and (iii) compare what remains of Curiosity  after this “weeding-out” process to Sucroë, and determine whether a substantial part of Curiosity was reproduced.

While not ruling out the possibility that this approach might be useful in determining if other types of works, such as computer programs, have been copied, the Supreme Court noted that many types of works do not lend themselves to that type of reductive analysis. Rather, a qualitative and holistic approach must be adopted to assess substantiality, and a piecemeal approach should be avoided. To determine whether a substantial part of Robinson’s work was copied, the copied features must be considered cumulatively, to determine whether they amount to a substantial part of Robinson’s skill and judgement expressed in his work as a whole. In short, the substantiality analysis should focus on whether the copied features constitute a substantial part of the plaintiff’s work,and not whether they amount to a substantial part of the defendant’s work. “The alteration of copied features or their integration into a work that is notably different from the plaintiff’s work does not necessarily preclude a claim that a substantial part of a work has been copied”, because the Copyright Act states that infringement includes “any colourable imitation” of a work. That said, if differences are so great that the work viewed as a whole is not an imitation, but rather a new and original work, then there is no infringement.  Adopting the words of the Court of Appeal, the Supreme Court noted that “[e]verything is therefore a matter of nuance, degree and context”.

Use of experts in a copyright case:

The Supreme Court affirmed that the test for admissibility of expert evidence from R. v. Mohan applies equally to trials for copyright infringement (and other intellectual property cases). To be admitted, the evidence must be (a) relevant; (b) necessary; (c) not offend any exclusionary rule; and (d) involve a properly qualified expert.

At trial, Robinson introduced the evidence of a professor of semiology (the study of signs and symbols and how they create meaning). The expert opined that there were latent similarities in how the two works used atmosphere, dynamics, motifs, symbols and structure to convey meaning. The trial judge relied on this evidence in finding copyright infringement.

The Cinar appellants had argued that the expert evidence did not meet the necessity criterion because the question of whether a substantial part has been copied must be assessed from the perspective of the lay person in the intended audience for the works at issue.

In holding that the expert evidence was admissible, the Supreme Court noted that it was sometimes necessary to go beyond a rigid application of the lay person standard.  Here, the works at issue were intended for a young audience. A rigid application of the standard would shift the question to whether the copied features were apparent to a five-year-old. Second, the works at issue – an unrealized submission compared to a finished product – were not easily compared without an expert’s help.  Lastly, the works had both patent and latent similarities. Expert evidence was necessary to help distill and compare the “intelligible” aspects that affect a viewer’s experience indirectly, such as atmosphere, dynamics, motifs, and structure.  As a result, the Supreme Court held that the trial judge did not err in admitting the expert evidence.

Personal Liability of Directors for Copyright Infringement

The Supreme Court affirmed prior jurisprudence of the Federal Court of Appeal that held that for a director and/or an officer of a corporation to be held personally liable for his or her company’s infringement of a copyright, “there must be circumstances from which it is reasonable to conclude that the purpose of the director or officer was not the direction of the manufacturing and selling activity of the company in the ordinary course of his relationship to it but the deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it.”  An officer cannot be held personally liable merely on the basis of his hierarchical status as officer of a corporation.

Disgorgement of Profits

Under section 35 of the Copyright Act, a defendant can be ordered to disgorge its profit to the extent that such profit is caused by the infringement.  Disgorgement of profits is designed mainly to prevent unjust enrichment, although it can also serve the goal of deterrence. The necessity of a causal link between infringement and profit may require that profit be apportioned between that which is attributable to the infringement and that which is not.  In some cases, however, the two works may be so interwoven that separation is impossible. The Supreme Court affirmed that the apportionment of profits between infringing and non-infringing components of a work is a factual determination subject to judicial discretion. Under Housen, an appellate court may only disturb a trial judge’s findings on apportionment if there are errors of law or palpable and overriding errors of fact.

The Supreme Court found that the Court of Appeal erred in interfering with the trial judge’s conclusion that the profits from the soundtrack could not be dissociated from the profits derived from the infringing material.  There was no evidence that the soundtrack could have been commercialized as a separate product if Curiosity had not been infringed.  As a result, the Supreme Court upheld the trial judge’s conclusion that it was inappropriate to apportion profits to the soundtrack as a non-infringing component of the work.

In contrast, the Supreme Court overturned the trial judge’s finding that profits be disgorged on a solidary basis, holding that a defendant can only be made to disgorge profits that it made, as opposed to the profits of other defendants with whom it participated in an infringement.

Non-Pecuniary Damages and the Application of the Andrews Cap

Prior Supreme Court case law in the context of bodily injury set a cap on the non-pecuniary losses that can be recovered following bodily injury.  Non-pecuniary loss is a broad category that covers elements such as loss of enjoyment of life, physical and psychological pain and suffering, and inconvenience. The Cinar appellants had argued that this cap on non-pecuniary damages should be extended and imposed on all non-pecuniary damages, regardless of whether they stem from bodily injury.  

Holding that the policy concerns specific to bodily injury cases (the socially burdensome inflation of amounts awarded as non-pecuniary damages) was not made out in the context of copyright infringement cases, the Supreme Court declined to apply a cap on the non-pecuniary damages awarded to Robinson. Moreover, the Supreme Court confirmed that damage to physical health arising as a consequence of copyright infringement is not sufficient to allow characterization of the loss as one arising from bodily injury.

Punitive Damages:

In Quebec, punitive damages can only be awarded where they are provided for by statute. In this case, the evidence established unlawful and intentional interference with several of Robinson’s Charterrights, and therefore the Supreme Court agreed with the Court of Appeal that punitive damages were justified.  However, since there was no statutory basis to justify the award of punitive damages on a solidary basis, they must be individually tailored to each defendant against whom they are ordered.

In assessing the quantum of punitive damages awarded, the Supreme Court held that the gravity of the conduct was an important factor. The award must strike an appropriate balance between the overarching principle of restraint that governs punitive damages and the need to deter conduct of this gravity. As a result, the Supreme Court overturned the Court of Appeal’s reduction in damages and increased the award to $500,000, which was still $500,000 less than the trial judge’s original award of punitive damages.

Cost Awards

The Supreme Court noted that there were serious points of law to be argued in the appeals, and therefore declined to award solicitor-client costs for the appeals before the Quebec Court of Appeal and the Supreme Court. However, the Supreme Court allowed the trial judge’s award of $1,500,000 in solicitor-client costs for the proceedings at the trial level to stand.

Bringing trademark infringement proceeding by application may have effect on damage award

On November 26, 2013, the Federal Court issued its decision in Trans-High Corporation v. Hightimes Smokeshop and Gifts Inc. The proceeding, which claimed trademark infringement, passing-off and depreciation of goodwill, was brought by the applicant, Trans-High Corporation (Trans-High) by way of a summary application to the Federal Court.  This option (which sees evidence confined to affidavit evidence, and no rights of discovery) was confirmed to be available by the Federal Court of Appeal in its 2011 decision in BBM Canada v. Research in Motion Limited. The respondent, Hightimes Smokeshop and Gifts Inc. (Hightimes Smokeshop), did not file any submissions in the proceeding or appear at the hearing.

In upholding the claims for trademark infringement and passing-off, the Court found that Hightimes Smokeshop had infringed Trans-High’s trademark “HIGH TIMES”, which has been registered in Canada since 1980 for use in association with magazines.  The Court found that Trans-High had tendered sufficient evidence to show a likelihood of confusion between its use of the mark in association with High Times magazine and website (with a focus on medical and recreational uses of marijuana) and Hightimes Smokeshop’s retail sale of marijuana-related paraphernalia and merchandise.  However, the Court declined to find depreciation of goodwill, citing insufficient evidence.   In particular, the Court noted that the evidence of volume of sales and depth of market penetration of magazines and related wares sold by Trans-High in Canada was limited, as was evidence in respect of the extent of advertising and publicity accorded to Trans-High’s HIGH TIMES trade-mark.  Further, there was little evidence of the degree of inherent or acquired distinctiveness of the HIGH TIMES trade-mark, and the products associated with the mark were confined to a specialized channel of trade.

Evidentiary issues were also at play when the Court refused to award the $200,000 in damages claimed by Trans-High.  The claimed amount purported to include the license fee Trans-High would have charged Hightimes Smokeshop to operate a 1500 square foot retail store under the HIGH TIMES brand in a major tourist centre such as Niagara Falls.  The Court noted that by deciding to proceed by way of application, Trans-High chose to forego any opportunities for discovery, to compel further and better information concerning depreciation of goodwill of its HIGH TIMES trade-mark by reason of the activities of Hightimes Smokeshop, as well as to elicit facts relating to damages caused by these activities.

While recognizing that it is difficult to quantify damages when a respondent refuses to participate in a proceeding, Mr. Justice Manson found no evidence to support the quantum of possible license fees and damages, other than a “bald assertion” in affidavit evidence filed by Trans-High.  Noting that Trans-High had never granted any voluntary licenses, the Court found that the “amount of damages requested is purely speculative”, and a damages claim must be based on more than pure speculation.

That said, the court did allow damages in the amount of $25,000, given the apparent wilful infringement of Hightimes Smokeshop, its failure to even acknowledge High Time’s trademark rights or to negotiate any form of settlement or to participate in the Court’s process.   The Court also fixed costs in the sum of $30,000, and ordered the transfer of the domain name www.hightimesniagarafalls.com.

Most of Copyright Modernization Act provisions now in force

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.

The new provisions that are now in force include the following:

  • Protection of Digital Rights Management (DRM). Also known as “technical protection measures” or, more commonly as “digital locks”, DRM is built into digital music, DVDs, and other media and technology products to ensure that they are not subject to unauthorized copying. The amendments include anti-circumvention provisions that prohibit the removal or tampering with DRM. The new provisions also prevent the removal of, or tampering with, Rights Management Information, which is used to identify the rights holders of an original work or to outline restrictions on use of the copyrighted work.
  • Reproduction for private purposes. Provisions have been added to the Copyright Act to allow individual Canadians to make copies of music and other copyrighted material if the original copy is not an infringing copy, the individual legally obtained the original copy other than by borrowing it or renting it, and the individual owns or is authorized to use the medium or device onto which the copy is reproduced (such as a computer, iPod or MP3 player) and as long as a digital lock is not picked in making the copy. The reproduction may only be used for private purposes and cannot be given away, sold or rented without first destroying all reproductions of the original copy. In addition, these provisions do not apply if the reproduction is made onto a medium that is governed by the private copying provisions currently found at Part VIII of the Copyright Act, such as CD-Rs.
  • Education exemptions. Provisions have been added to the Copyright Act to make it legal for students at schools and higher learning institutions to download copyrighted information for the purpose of study and research. The provisions permit schools to transmit materials used in classrooms to students located off-campus to facilitate learning, as long as the material is restricted to students.  In addition, teachers and students are allowed to use copyrighted material in lessons conducted over the Internet. This applies both to teachers and students in a physical classroom and those who may be viewing recordings of the lessons over the Internet at a later time. Teachers can also digitally deliver course content to students, subject to fair compensation to copyright owners. 
  • Time-shifting provisions have been added which finally legitimize the decades long practice of viewers making one recording of communication signals or programs for private purposes. The time-shifting recording must be obtained from a legal source and used only for private purposes. As well, technical protection measures could not be circumvented to make the recording, and the recording cannot be kept “longer than is reasonably necessary in order to listen to or view the program at a more convenient time”.
  • Statutory damages for non-commercial infringement have been lowered from the previous maximum of $20,000.00 for infringement of each protected work, to a new maximum of $5,000.00 in respect of all infringements involved in the proceedings for all works or other subject-matter.  Moreover, if a plaintiff elects statutory damages for non-commercial infringements, it will be barred from collecting statutory damages from that defendant for any other non-commercial infringements occurring before the proceeding began, and no other copyright owner may elect statutory damages against that defendant for non-commercial infringements that were done before the initiation of the proceedings in which statutory damages were elected.
  • Expanded fair dealing exceptions. Fair dealing, which permits use of a copyrighted work without permission of the copyright owner, has been expanded to include uses for the purposes of education, parody or satire in addition to prior fair use exemptions such as use for research or private study.  While procedurally, a defendant is required to prove that his or her dealing with a work has been fair, the Supreme Court of Canada has noted (most recently in Alberta (Minister of Education) v. Canadian Copyright Licensing Agency, which we wrote about here) that a fair dealing exception is a user’s right, and should not be interpreted restrictively.   
  • A new non-commercial “mash-up” exemption, exempting from copyright infringement the use of pre-existing works to create new non-commercial works, defined as “user-generated content”. This exemption is only available if the use of the copyrighted work is done solely for non-commercial purposes and does not have a substantial adverse effect (financial or otherwise) on the exploitation of the existing work (including that the new work isn’t a substitute for the existing one), and provided that the individual making the new work reasonably believes that the source material is not itself infringing copyright and that there is a mention (if it is reasonable in the circumstances) of the sources of the works incorporated in the new work.
  • Also effective November 7, 2012, engravers, photographers and portraitists will be the default owners of copyright in the engravings, photographs and portraits they create on commission, unless there is an agreement to the contrary.  This is the result of the repeal of section 13(2) of the Copyright Act, which provided that a person who commissions an engraving, photograph or portrait is the first owner of copyright of those types of works. 

Panning for gold in the mud: the availability of privacy damages under PIPEDA

More than 10 years after the introduction of federal private sector privacy legislation in Canada, damage awards for breaches of the law have been few and far between -- and where such awards have been made, the dollar amounts awarded have been modest.

In light of the sometimes confusing, and even contradictory judgments to date, there is also considerable uncertainty as to when such damages might be awarded, and what evidentiary test a complainant might have to meet.

In Panning for gold in the mud: the availability of privacy damages under PIPEDA, in the December 2011 edition of the Canadian Privacy Law Review, David Elder of our Privacy and Data Protection Group, attempts to knit together the existing case law into a coherent analytic framework for the availability of privacy damages in Canada.

Article reproduced with permission of the publisher from Canadian Privacy Law Review, Vol. 9, No. 1, December 2011.

Federal Court muddies the waters on privacy damages

David Elder -

In a problematic judgement, the Federal Court of Canada has awarded damages against a bank for the wrongful disclosure by one of its employees of account information in response to a subpoena.

This is only the second case in which the Court has awarded damages for non-compliance with the Personal Information Protection and Electronic Documents Act (PIPEDA); and like the first damage award under the statute, the amount awarded was minimal. The case is also perplexing, because it seems to contradict the reasoning in an earlier decision by the same court, which established that to be eligible for an award of damages, the alleged injury must result directly from a breach of the Act.

In the case of Landry v. Royal Bank of Canada, the husband in a divorce proceeding sent a subpoena duces tecum1 to the bank, ordering one of the bank’s employees to appear before the court and bring certain records concerning the account records of his wife. In violation of the bank’s own policy, which requires the consent of the account holder before account information can be released to a third party, an employee of the bank disclosed the records in question directly to counsel for the husband.

Not surprisingly, the Court readily found that the disclosure was in breach of the bank’s obligations under PIPEDA. What was surprising was that any damages at all were awarded on the facts of the case.

In this regard, the record revealed that the applicant wife had, in the last years of her marriage, opened a bank account without her husband’s knowledge and built a nest egg. In the divorce proceeding, she concealed the existence of the account in question from both her husband and the court, despite a clear legal obligation to make a full and honest disclosure of assets and despite being asked repeatedly under oath about the existence of such an account. As a result of the subpoena, the account records were properly provided by the bank to the divorce court, which later placed the information on the public record and took it into account in rendering judgement. The divorce judgement itself made pointed reference to the applicant’s secretive behaviour and denials under oath.

In her pleadings, the applicant had claimed that the bank’s disclosure had done great harm to her personal life, and that she now had problems with her family and friends “as a result of the conduct of her ex-husband, who was using certain passages of the divorce judgement to harm her reputation.”

In earlier cases, the Court seemed to have established the principles that damage awards under PIPEDA should only be made “in the most egregious situations” and that to be eligible for an award from the court, the applicant would have to establish damages flowing directly from the privacy breach itself, rather than from some concealed behaviour that only came to light through the privacy breach.

For example, in the case of Stevens v. SNF Maritime Metal Inc., the Court found that the applicant’s claim for damages flowed from the loss of his employment, and implicitly, that the employment had been lost due to a fraud he committed against his employer. Although the Court found that, although the fraud may not have come to light except through the privacy breach of a third party, it was the fraud itself, and not the disclosure thereof, that gave rise to the damages.

By contrast, in Landry, the Court seems to have taken the opposite approach. Despite the Court’s explicit acknowledgement that the bank had acted properly in filing the applicant’s account information with the divorce court pursuant to the subpoena, and its implicit finding that the alleged damages stemmed from public dissemination of the resulting divorce judgement by the husband, the Court nevertheless awarded damages – albeit minimal damages -- to the Applicant, noting that the bank’s error remained serious, even when these factors were taken into account.

Although the applicant sought damages totalling $100,000, including $25,000 in exemplary damages, she was awarded only a token $ 4,500. Although she was also awarded her costs, plus interest, the resulting damage award likely pales in comparison to the amount that the applicant would have incurred in legal fees, which would not be covered by the cost award.

While the Landry decision shows that the court may not been entirely consistent in its approach to damage awards under PIPEDA, one thing seems certain: litigants are unlikely to receive any substantial damage awards under the statute unless they can demonstrate significant, tangible losses.

[1]  A subpoena duces tecum is a court summons ordering a named party to appear before the court and bring with them specified documents or other tangible evidence for use by the court; however, it does not require that the evidentiary material in question be provided at that time to the party requesting the subpoena; rather, it contemplates that during the proceedings, the court will determine whether the material in question should be disclosed, weighing such factors as the right to privacy and the existence of privilege.