Liability to third parties on the Internet

A recent inquiry from a client caused me to examine the  topic of liability on the internet.  My client has a website with associated YouTube channel where persons can post articles and videos.  My client’s potential liability with respect to the persons who post the articles and videos can easily be controlled by contract.  Prior to posting, a user can be required to “accept” the “terms of service” which has all the desired provisions.  However, this does not address my client’s potential liability to third parties. In the context of my client’s inquiry, he was most concerned about someone posting content that is defamatory of a third party.

Most of this client’s internet traffic originates from the United States.  In the United States the applicable law is section 230 (c) (1) of the Communications Decency Act.  This section indicates that no provider of an “interactive computer service” shall be treated as publisher or speaker of any information provided by another.  If the applicable law were U.S. law, the client would have some protection from liability pursuant to the provisions of the Communications Decency Act.   A defamed third party’s only remedy would be against the user who posted the defamatory content.

Canada does not have the equivalent of the Communications Decency Act.  This means that a party who operates a website, such as my client, potentially has equal liability with the user who actually posts the defamatory material.  Canadian Law recognizes freedom of expression under section 2(b) of the Canadian Charter of Rights and Freedoms.  However, the law of defamation, which protects a person’s reputation from unjustified assault, is one of the limitations on freedom of expression.

In cases dealing with defamatory statements on the internet, the first consideration of Canadian Courts is whether, when the defamatory subject matter was brought to the attention of the defendant, the offending material was promptly taken down.  Taking down defamatory material limits liability of the party who operates the website.

If the defamatory content is not taken down promptly, the Canadian Courts get into an analysis of the elements of defamation:
1. Were the comments defamatory, in the sense that they would tend to lower the plaintiff’s reputation in the eyes of a reasonable person?
2. Was it clear that the comments referred to the plaintiff?
3. Were the comments “published”?

If the basic elements of defamation are proven, the onus shifts to the Defendant to establish that a defence of “fair comment” is available.  The element of the defence of fair comment are:
1. Was the comment on a matter of public interest?
2. Was the comment based upon fact?
3. Is the comment recognizable as an expression of an opinion and not a statement of a fact?
4. Could a person honestly express that opinion based upon the proven facts?

It is important that the facts be sufficiently stated or otherwise known to the intended audience, so that they are able to make up their own minds on the merits of the comment.  There must be a relationship between the comment and the underlying facts. If the factual basis for the comment is unstated or unknown, or turns out to be false, the fair comment defence fails.  Even if the facts are known and related to the comment, the defence of “fair comment” can be defeated if the Defendant in making the comment was actuated by express malice against the Plaintiff.

The writer’s advice to person who operate in Canada and are, therefore, subject to the jurisdiction of Canadian Courts, is to put in place the following:
1. Have provisions in your “Terms of Service” that enable you to arbitrarily take down content alleged to be defamatory.
2. Have a clear “Take Down” notification system, so that third parties can alert you to content that is defamatory.
3. Error on the side of caution by quickly taking down content when you receive notification that a third party considers content to be defamatory.

Google Arguing Canadian Court Order not Enforceable in United States

In the article posted July 18, 2017 we described a ground breaking decision of the Supreme Court of Canada upholding a lower court order that required Google to de-index D’s website from search results worldwide.  The Supreme Court of Canada stated:
“Where it is necessary to ensure the injunction’s effectiveness, a court can grant an injunction enjoining conduct anywhere in the world. The problem in this case is occurring online and globally. The Internet has no borders — its natural habitat is global. The only way to ensure that the interlocutory injunction attained its objective was to have it apply where Google operates — globally. If the injunction were restricted to Canada alone or to, the remedy would be deprived of its intended ability to prevent irreparable harm, since purchasers outside Canada could easily continue purchasing from D’s websites, and Canadian purchasers could find D’s websites even if those websites were de‑indexed on”
“Google’s argument that a global injunction violates international comity because it is possible that the order could not have been obtained in a foreign jurisdiction, or that to comply with it would result in Google violating the laws of that jurisdiction, is theoretical. If Google has evidence that complying with such an injunction would require it to violate the laws of another jurisdiction, including interfering with freedom of expression, it is always free to apply to the British Columbia courts to vary the interlocutory order accordingly.”

To bring you up to date, Google has since filed an action before the United States Courts seeking a declaratory judgment that the Canadian order is not enforceable in the United States.  Most recently, a motion for a preliminary injunction was heard that enjoined the enforcement of the Canadian order in the United States pending the result of the action seeking a declaratory judgement.  This motion merely preserves the “status quo” pending a decision of the United States Courts. The results of the United States action will have important ramifications.  Stay tuned for future updates.

What the IP Profession is talking about

I am back from my duties at the Annual Convention of the Intellectual Property Institute of Canada, which took place October 11 through 13 in Niagara Falls. I have always indicated that what is happening in the profession is reflected in the topics dealt with at the conference. The following topics were addressed at the conference, listed by title and followed with a brief explanation:

IP and Innovation – A fireside Chat with Innovation Science and Economic Development Parliamentary Secretary David Lametti
This session discussed the Liberal Government’s Innovation Strategy

The College and Professional Ethics:  What it means for IP Professionals.
This session discussed the creation of the equivalent of the Law Society for the IP Profession, in order to maintain high standards.

The Law of Utility in Canada – Where are we now and where are we going?
This session discussed the recent Supreme Court of Canada AstraZeneca Canada Inc. v. Apotex Inc. decision which discredited a previous line of cases that invalidated patents for useful inventions that did not deliver everything “promised”.

Post-Final Practice – Understanding your options at the end of the line.
This session discussed options when a patent application is met with a “Final” rejection.

Who’s Offended? – A review of the Laws on Obscene, Scandalous, and Immoral Marks in Canada, the U.S. and the EU.
This session discussed the balance between the protection of the public, freedom of commercial speech and property rights, in light of recent U.S. developments with the Slants Case and the Washington Redskins Case.

Sounds, Scents, Flavours, – an Update on Non-Traditional Marks in Canada, the US and EU.
This session discussed new ways in which businesses are distinguishing their products in the market place.

Updating Your Toolkit for Fighting Obviousness Issues Post-Sanofi
This session discussed ways of countering a rejection by a Patent Examiner that an invention is “obvious”.

Use it or Lose it: Non-Use Cancellation Proceedings
This session discussed ways of removing from the Register Trademarks that are no longer in use and the evidence that must be filed to retain a Trademark on the Register when a notice to prove continuing use is received.

Trademarks, Copyright and VQA: Branding and Marketing Issues for Wineries in Canada
The Niagara region has a number of significant wineries.  This session provided an opportunity to place industry representatives on a panel for an in-depth discussion of the Intellectual Property Issues faced by wineries.

Women in IP Networking Group Reception
This reception was intended as a networking session for women involve in Intellectual Property, men were invited.

Canadian Intellectual Property Office Update
An address with a question and answer session was presented by the Commissioner of Patents, Registrar of Trademarks and Chief Executive Officer of the Canadian Intellectual Property Office, Johanne Belisle.

Keep it or Share it:  Confidential and Proprietary Information in Joint Ventures
This session discussed the area of trade secrets, and issues around divulging trade secrets in commercial negotiations.

Canada’s Innovation Strategy
This session dealt in much greater depth with the Government’s Innovation Strategy and the public consultations that were held to get public input on the Innovation Strategy.

Copyright: Fair Dealing and Technological Protection Measures
This session discussed fair dealing as an exception to copyright infringement and the prohibition against circumventing technological protection measures.

Updates from the Patent Branch
This was an address with a question and answer session by Agnes Lajoie, the Director General of the Patent Branch and Assistant Commissioner of Patents.

Updates from the Trademarks Branch
This was an address with a question and answer session by Mesmin Pierre, the Director General of the Trademark Branch.  The profession was updated on a number of changes that are scheduled to take effect in 2019.

Talking to Your Client – The New Conversation
Corporate executives who hire Intellectual Property Professionals gave their views on how the IP profession can communicate better with their clients.

Top Intellectual Property Cases of the Year
This session dealt with the 10 top cases in each of the areas of Patents, Trademarks and Copyright/Design.

Fair Dealing Among YouTubers

A recent decision of the US District Court for the Southern District of New York regarding a dispute between “YouTubers” is getting a fair amount of comment, as it is one of the first cases of its kind regarding the use of YouTube video clips.  Ethan and Hila Klein who operate the YouTube channel H3H3 posted a video that criticized a video posted by fellow YouTuber Matt Hosseinzadeh.  The H3H3 video featured clips from the Hosseinzadeh video and Hosseinzadeh took exception to both the use of the clips and the comments that were made.   Hosseinzadeh sued the Kleins for copyright infringement and defamation.

U.S. copyright law contains “fair use” provisions. Criticism is one of the exceptions to copyright infringement that is considered to be “fair use”.  There was no question that the use constituted “criticism”, and the District Court Judge focused upon whether  the use was “fair”, so as to  fall within the “fair use” exception.  Large portions of the Hosseinzadeh video were used by H3H3.  However, the Judge was satisfied that this was necessary in order for H3H3 to comment and critique the Hosseinzadeh video.  The effect of the H3H3 use on the potential market for the Hosseinzadeh video was examined.  The Judge was satisfied that the H3H3 video was not a substitute or replacement of the Hosseinzadeh video.    In the end result, the Judge decided that the use by H3H3 was “fair use” and that, although critical, the comments H3H3 video contained were not defamatory, but merely “non-actionable opinions”.   It is to be noted that the fact the Hosseinzadeh video was a scripted and fictional creative work played a role in the Judge’s characterization of the critical comments as “non-actionable opinions”. The critical comments focused upon the fictional creative work and could not be construed as a personal attack upon Hosseinzadeh.

The question then becomes what is the comparable situation in Canada.  In Canada “fair dealing” is analogous to the U.S. concept of “fair use”.  Section 29.1 of the Canadian Copyright Act contains a provision expressly contemplating “fair dealing for the purpose of criticism or review” as an exception to copyright infringement.

29.1 Fair dealing for the purpose of criticism or review does not infringe copyright if the following are mentioned:
(a) the source; and
(b) if given in the source, the name of the
(i) author, in the case of a work,
(ii) performer, in the case of a performer’s performance,
(iii) maker, in the case of a sound recording, or
(iv) broadcaster, in the case of a communication signal.
It would appear to the writer that, as long as section 29.1 is complied with, the Canadian Courts would view these issues much as the U.S. Courts have done. In this context, it is no different than a television movie reviewer reviewing a move about to open in the theatres.   However, the Court will look at the quantity of video material taken to determine whether the resulting work is intended as or could be used as a “substitute” for the original work.  The Court will also look at whether the critical comments are “non-actionable opinions” on a creative work or constitute a defamatory personal attack.

In the writer’s opinion, even greater care must be taken if the video clips are not of a “creative” work, but rather of a serious video post expressing an opinion.  In such cases, taking too much of the serious video, could be viewed as a substitute for viewing the serious video.  Conversely, taking too little of the serious video could leave the opinion without support and out of context, thereby subjecting the person who posted the serious video to ridicule.  Also care must be taken to criticize the opinions presented and not include extraneous comments that could be construed as a personal attack. With the number of bloggers on the internet, one can expect more of these kind of conflicts to arise in future.  One way to gain followers will be to post commentary on video material posted by persons who may have more followers than you.  For example, many persons are presently becoming known on the internet by posting criticism of Donald Trump.

Protecting Graphical User Interfaces

Apple - Display Screen with User Interface and Electronic IconSometimes Intellectual Property protection available to software developers appears to be inadequate.  Legal professionals serving the software industry are forced to work within confines set by the “traditional” forms of Intellectual Property protection of Patents, Designs, Copyright and Trademark.  The problem has become more acute since the Alice Corporation decision in the United States limited those instances in which patent protection is available.
However, software developers and legal professionals serving the software industry, such as myself, can learn new tricks by watching what industry leaders Apple Corporation (hereinafter Apple) and Samsung Corporation (hereinafter Samsung) are doing.  Apple has filed 531 Design applications in Canada.  Samsung has filed 227 Design application in Canada.
Under the Canadian Industrial Design Act, “design or industrial design means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye.  Similarly, the US Patent Act refers to, “any new, original, and ornamental design for an article of manufacture…”
Design protection traditionally has been used to protect the ornamental shape and appearance of chairs, lamps, telephones and various consumer objects. In the past few years, Apple, Samsung and others have expanded the use of Design protection to protect not only the physical shape of their products but also their software development and implementation.  Among the Design applications filed by Apple and Samsung one can find applications with titles like:
“Display Screen with Font”
“Display Screen with Icon”
“Display Screen with Graphical User Interface and Electronic Icon”
“Display Screen with Graphical User Interface”.

The reader will note that Apple and Samsung are using Design law to protect Graphical User Interfaces, fonts and icons.   Each Design reflects what a viewer would see on their screen.

Complaint Websites use of Parody

The Federal Court decision by Mr. Justice Phelan on June 23, 2017 in the case of United Airlines, Inc v. Jeremy Cooperstock provides some guidance to persons considering establishing complaint websites.

Cooperstock operated a complaint website under the domain name, which he registered and launched on or about April 24, 1997. Cooperstock chose the domain name as a play on the word “United”, so as to highlight the disconnection and disorganization that he perceived in the company. operated as a consumer criticism website where visitors  could find information on United, submit complaints about United, and read complaints about United dating back to 1998 in the database of complaints.

Following a redesign of in September 2011, United became aware of a strong resemblance between and the United Website. was updated again in June 2012 to mirror the United Website design launched in March 2012.  United contacted Cooperstock, and Cooperstock made certain alterations to  He changed the colour of the T and I in the Untied Logo to red (from blue) and changed a frown on the Frowning Globe Design to red (from blue).  He also added a disclaimer and a pop-up dialogue box to the website indicating that this was not the website of United. The disclaimer, stating “(This is not the website of United Airlines)”, was placed at the top of the website in small black type – next to  a graphic identifying “Untied” as “An Evil Alliance Member”.

Justice Phelan noted that parody and satire are not defences to trademark infringement.  Justice Phelan quoted from the Green v Schwarz case, “notwithstanding that the Defendant is obviously spoofing the Plaintiff’s trade mark, he is also cashing in on the goodwill that the Plaintiff has obtained for its trade mark”.    A Trademark confusion analysis was then performed.
“ Cooperstock’s obvious imitation of the United Marks and the United Website is meant to cause visitors to associate with the United. The small details differentiating the marks are less important than the general appearance of the marks and of the websites. Cooperstock attempted to differentiate the two Globe Design marks by “zooming in” on the image to show that his globe mark included a red frown. This would not be the approach of the hurried consumer with an imperfect recollection. Further, consumers would not be engaging in a side-by-side comparison of the two marks, particularly if they are unaware that there is any need to be diligent in this regard (i.e., if they are not aware that a “spoof” website exists).  I find that there was ample evidence adduced to support a finding that there is a likelihood of confusion.  The changes that Cooperstock made to the United Marks were small and were designed to maintain his core purpose: identification of his website with United.”

Justice Phelan noted that although parody is not a defence to trademark infringement. parody may be a defence to copyright infringement in that parody is now an allowable purpose under s 29 of the Copyright Act, which  reads:
29 Fair dealing for the purpose of research, private study, education, parody or satire does not infringe copyright. (emphasis added)

Mr. Justice Phelan  held that the alterations to  United’s copyright materials  constituted parody:
“Parody should be understood as having two basic elements: the evocation of an existing work while exhibiting noticeable differences and the expression of mockery or humour. In my view, falls within the definition of parody described above: it evokes existing works (the United Website, the United Logo, and the Globe Design) while showing some differences (such as content and disclaimers), and it expresses mockery (and criticism) of the United.”

Justice Phelan then  considered whether the use of parody in this context was “fair dealing”; as Cooperstock  was required to prove that his dealing with the work of United  had been fair in order to obtain the protection of s. 29 of the Copyright Act.
“It is unclear why substantial copying of the United Website or the other copyrighted works was necessary in order to meet the parodic goal of humorously criticizing the United; as discussed above, parody requires humour, whereas Cooperstock’s website was simply mean-spirited. The minimal use of certain parodic elements in the past (i.e., “fly the unfriendly skies” and the wordplay between “united” and “untied”) present an example of an alternative to the current dealing. Indeed, if the Cooperstock truly wished the best outcome for the United’s passengers, it is unclear why he would run any risk of confusing passengers.   In my view, it is the substantial copying of the United’s copyrighted material that is having a harmful impact, not the criticism contained on Negative commentary regarding the United abounds on the internet. United is not so much concerned with the informational aspect of (which may lead customers to purchase tickets with other airlines) as it is with the potential that customers will believe they are interacting with the United when they are actually interacting with (which may, in turn, cause customers to believe that the United is unprofessional or that it does not respond to complaints).”
In his reasons for Judgement, Justice Phelan summarized Mr. Cooperstock’s position as follows:
“Parody is not simply a defence to copyright infringement – it is also an aspect of free speech. However, like all free speech, it is not unrestricted.  Cooperstock’s website meets the first step of the CCH test, as it is for the allowable purpose of parody, but it does not meet the second step of the test. The questionable purpose of the dealing, amount of the dealing, and effect of the dealing all weigh in favour of the conclusion that this dealing is not fair.”
“in this case, Cooperstock sailed too close to the wind – and he was put up on the rocks”.

.CA Domain Name Disputes

The Canadian Internet Registration Authority (CIRA) has a mechanism for resolving domain name disputes.  This domain name dispute resolution mechanism is available to all Trademark owners. A CIRA panel hearing a domain name dispute has the power to order the transfer of a domain name from an offending party to a complainant.

It is important to note that once a CIRA panel has made a ruling in a first proceeding, there is nothing in the rules of CIRA that prevents a second proceeding from being initiated relating to the same domain name issue involving the same two parties.  This is exactly what happened concerning the Trademark PicMonkey.  A first CIRA panel ruled against the complainant, as there was inadequate evidence on two keys issues.   The first issue was a lack of evidence that the complainant had used the Trademark in Canada prior to the offending party registering their domain name.  The second issue was a lack of evidence that would tend to show “bad faith” on the part of the offending party.

The complainant consulted a legal firm familiar with domain name disputes.  It was determined that there was sufficient evidence on those two key issues.  Prior to the domain name being registered by the offending party, the complainant’s PicMonkey site had been accessed over 41,000 times by Canadian IP addresses.   There was also evidence that the offending party was a “cyber-squatter” who tied up domain names to a number of well-known third party brands. A second proceeding was launched and a second CIRA panel ruled in the complainant’s favour ordering the offending party to transfer the domain name to the complainant.

There are a number of lessons to be learned from the PicMonkey experience.  The first lesson is that it is critical that a Trademark owner place before any CIRA panel the best possible evidence.  A CIRA panel will only order the transfer of a domain name when the evidence is clear.  The second lesson is that, if you are a complainant who has handled a first CIRA proceeding yourself and messed up, it is possible to retain competent legal counsel and launch a second proceeding with better evidence.

“Fair Dealing” under Copyright Law

“Fair Dealing” allows persons who qualify under one of the relevant sections of the Copyright Act to copy portions of literary works without a licence from the authors.  The leading case on “fair dealing” is the Supreme Court of Canada decision in CCH Canadian Ltd v Law Society of Upper Canada in which a law library was making copies of legal cases for lawyers doing legal research.   On July 12, 2017 the Federal Court rendered a decision in Access Copyright v York University relating to “fair dealing” by educational institutions.

The Canadian Copyright Act provides for collective societies, being organizations that manage licensing schemes for multiple creators/authors.  Access Copyright is such a collective society.  Access Copyright represents tens of thousands of writers, visual artists and publishers, and licenses the copying of their works to educational institutions, businesses, governments and others.

Between 2005 and 2011, York University had a license to copy literary works with Access Copyright.  During that period, York University copied 122 million print exposures for use in course packs – an average of 17.5 million exposures per year. Each student at York University would receive 387 exposures per year in course packs, 80% of which came from books.

In 2011, York University decided to “opt out” of their license with Access Copyright, instead electing to  copy under its own “fair dealing” Guidelines. Between 2011 and 2013, York University outsourced the majority of its course pack production to three external copy shops which copied between 4.4 million and 7.6 million exposures per year – 90% of which were from books.
The Supreme Court of Canada decision in CCH Canadian Ltd v Law Society of Upper Canada case provided the following guidance to lower courts considering fair dealing:
•                     The analysis is a two-step process: first, the authorized purpose (in this case education) must be established and second, the dealing must be fair;
•                     “Fair” is not defined and is a question of fact depending on the circumstances of each case; and,
•                     The fairness analysis engages six non-exhaustive factors:
a)                  purpose of the dealing,
b)                  the character of the dealing,
c)                  the amount of the dealing (amount of copying),
d)                 alternatives to the dealing,
e)                  the nature of the work, and
f)                   the effect of the dealing on the work.

In the Access Copyright v York University decision, the Federal Court noted that, other than the legal principles annunciated in CCH, that decision is more of a burden than a benefit to York University. One important distinction is that the copying done at the Law Library was for others, not for the Library itself. In York University’s situation, the copying and the Guidelines serve York University’s interests and those of its faculty and students. There is an objectivity in CCH which is absent in York University’s case.
Of even greater significance is that in CCH, the copying at issue was that of a single copy of a reported decision, case summary, statute, regulation, or limited selection of text from a treatise. It was not the mass copying of portions of books, texts, articles, entire artistic work, or portions of collections, nor was it the multiple copying of those materials into course packs or digital formats.   There were a number of other differences which included:
•                     Copying at a single location under the supervision and control of research librarians in the Library contrasted with no effective supervision, control, or other method of “gatekeeping” at York University;
•                     A policy strictly applied and enforced by librarians versus virtually no enforcement of the Guidelines by anyone in authority at York University;
•                     Single copies made versus multiple copies;
•                     A large amount of ad hoc or situational copying for users at the Library contrasted with the mass systemic and systematic copying at York University; and,
•                     An absence of negative impacts on publishers in CCH as contrasted with the negative impacts on creators and publishers caused or at least significantly contributed to by York University.

The Guidelines permitted copying of up to 10% or one chapter of a book. The Federal Court noted that these copying thresholds of York University were arbitrary and expressed the view that a failure to justify the choice of thresholds seriously undermined the overall fairness of the York Guidelines.   The Federal Court noted that under the terms of the Guidelines, in some situations the permitted copying could encompass 100% or such a large part of a work as to appropriate the whole (e.g. for a journal article in a periodical, a short story in an anthology, or a chapter in an edited book). The Federal Court noted that York University had no means of meaningful control or monitoring of compliance with the Guidelines.

The Federal Court accepted evidence from experts that the Guidelines have had a significant negative impact, summarized as follows:
•                     They contributed to a drop in sales and accelerated the drop in unit sales – up to 6.9% per year and 3.4% in revenues between 2012 and 2015. Precise allocation of the amounts attributable to the Guidelines is not possible, but it was a material contribution.
•                     They caused a loss of revenue to creators and publishers as evidenced by the loss of licensing income. The range of loss to Access Copyright alone is between $800,000 and $1.2 million per year.
•                     Actual and expected loss of licensing income resulting from the Guidelines has a negative impact on publishers. Licensing revenues represented about 20% of publishers’ revenues.
•                     Actual and expected loss of licensing income has a negative impact on creators. A survey confirmed the importance of licensing revenue to writers and the materiality of a loss of revenue.
•                     On a balance of probabilities and recognizing the inherent unreliability of predicting the future, there are likely to be adverse long-term impacts of the Guidelines on investment, content, and quality.

The Federal Court concluded that the Guidelines established by York University were not “fair” and, as such, copying under the terms of the Guidelines constituted copyright infringement.  There will now be a determination of the amount of compensation that York University will be required to pay to Access Copyright for the infringement.  Numerous Universities established Guidelines similar to those of York University.  This decision will, without question, impact educations institutions across Canada.

Supreme Court of Canada Decisions regarding Intellectual Property

It used to be that decades would go by without any Intellectual Property cases being considered by the Supreme Court of Canada (SCC).   The fact that there have been two significant SCC decisions on Intellectual Property within a period of 3 days at the end of June, is indicative of the importance of Intellectual Property in the new economy.

It is difficult to “police” the internet, due to the fact that the internet is worldwide and Court orders are unenforceable outside of the nation that granted them. On June 28, 2017 the SCC decided the Google Inc v. Equustek Solutions Inc. case.  In that case, Equustek (E) obtained an interim injunction prohibiting an infringer, D, from selling infringing products. D disappeared and, in a blatant breach of the injunction, continued sales over the internet.  A lower Court ordered that Google de-index the website of D from the search results on Google.  Google immediately complied, de-indexing the website of D from the Canadian search results available to Canadians through the Canadian default website,   However, D continued its infringing activities and the website of D continued to be available on Google, except for  E sought a Court order directing Google to de-index D’s websites from ALL Google search results worldwide and not just the Canadian search results.  Google resisted on the basis that the Canadian Court Order should not be given effect outside of Canada. The matter was appealed first to the British Columbia Court of Appeal and then to the SCC.

The SCC upheld the lower court order that required Google to de-index D’s website from search results worldwide, stating as follows:
“Where it is necessary to ensure the injunction’s effectiveness, a court can grant an injunction enjoining conduct anywhere in the world. The problem in this case is occurring online and globally. The Internet has no borders — its natural habitat is global. The only way to ensure that the interlocutory injunction attained its objective was to have it apply where Google operates — globally. If the injunction were restricted to Canada alone or to, the remedy would be deprived of its intended ability to prevent irreparable harm, since purchasers outside Canada could easily continue purchasing from D’s websites, and Canadian purchasers could find D’s websites even if those websites were de‑indexed on”

“Google’s argument that a global injunction violates international comity because it is possible that the order could not have been obtained in a foreign jurisdiction, or that to comply with it would result in Google violating the laws of that jurisdiction, is theoretical. If Google has evidence that complying with such an injunction would require it to violate the laws of another jurisdiction, including interfering with freedom of expression, it is always free to apply to the British Columbia courts to vary the interlocutory order accordingly.”

A number of patents have been found to be “invalid” by lower Courts based on the so-called “Promise Doctrine”.   The Promise Doctrine created a higher threshold for utility based on the “promises” in the patent. Under the Promise Doctrine, where the specification of a patent does not promise a specific result, a “mere scintilla” of utility is sufficient; but where the specification sets out an explicit “promise,” utility will be measured against that promise. On June 30, 2017 the SCC decided the AstraZeneca Canada v. Apotex case.  A lower Court held that the AstraZeneca patent was invalid for lack of utility under the Promise Doctrine, as it promised more than it could provide. The matter was appealed to the Federal Court of Appeal and then to the SCC. AstraZeneca argued its patent was improperly invalidated on the basis of the Promise Doctrine.

In the result, the SCC found the Promise Doctrine to be unsound and characterized it as an interpretation of the utility requirement that is incongruent with both the words and the scheme of the Patent Act. The SCC held that the Promise Doctrine is excessively onerous in two ways: (1) it determines the standard of utility that is required of a patent by reference to the promises expressed in the patent; and (2) where there are multiple expressed promises of utility, it requires that all be fulfilled for a patent to be valid.  To determine whether a patent discloses an invention with sufficient utility, courts must first identify the subject matter of the invention. Second, courts must then ask whether that subject matter is useful, that is, whether it is capable of a practical purpose. The Act does not prescribe the degree of usefulness required, or that every potential use be realized. Therefore, a single use related to the nature of the subject matter is sufficient, and that utility must be established by either demonstration or sound prediction as of the filing date.

These decisions by the SCC are most welcome by the patent profession.  A patent holder no longer has to be concerned about an attack on the validity of the patent based upon the Promise Doctrine.  Should an infringer ignore a Court injunction obtained by the patent holder, steps can be taken to have companies that control search engines, such as Google, de-index the infringer’s website so that they no longer appear in the search results.

What is the significance of Posting Materials on the Internet?

The definition of the word “publication” in the Canadian Copyright Act is a follows:
2.2 (1) For the purposes of this Act, publication means
(a) in relation to works,
(i) making copies of a work available to the public,
(ii) the construction of an architectural work, and
(iii) the incorporation of an artistic work into an architectural work, and
(b) in relation to sound recordings, making copies of a sound recording available to the public,
but does not include
(c) the performance in public, or the communication to the public by telecommunication, of a literary, dramatic, musical or artistic work or a sound recording, or
(d) the exhibition in public of an artistic work.

Section 77 of the Copyright Act has a provision allowing persons to obtain permission from the Copyright Board to use copyright materials, if the owners of the copyright materials cannot be located.  There have been two recent applications before the Copyright Board relating to materials that were posted on the Internet.  One application for permission to use related to a comment that was posted in a “Comments” section of an online news service.  The other related to a YouTube video.
After review, the Copyright Board was satisfied that the copyright owners were not locatable, and indicated that they would be prepared to grant permission in the form of a non-exclusive license, if the comment and the YouTube video were considered to be “published”.   However, neither the comment nor the YouTube video were intended to be downloaded.  The comment was merely viewable on the website of the news service and the YouTube video was intended to be streamed rather than downloaded.  The Copyright Board noted that under section 2.2 of the Copyright Act “publication” expressly does not include “communication to the public by telecommunication”.  The Copyright Board reached the conclusion that any materials posted on the internet (that are not intended to be downloadable) are merely communication to the public by telecommunication and thus are not “published” for the purposes of the Copyright Act.
I must confess that I have never had occasion to critically review the exceptions to “publication” contained in the definition of publication, until now.   Relying merely upon common sense, I assumed that if the entire world could view the copyright materials on the internet, that they were published.  I was wrong!
This finding by the Copyright Board potentially has significant implications.  There are many provisions in the Copyright Act that treat unpublished materials differently from published materials.   Materials that are merely posted to the Internet without the intention that they be downloaded are now considered to be unpublished materials. This will likely spawn further cases and commentary, which we will report to you as they are “communicated to the public by telecommunication”.