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Digital content and IP issues
Are websites and any other digital content required to display certain legal notices or other information in your jurisdiction?
Federal privacy laws, provincial consumer protection laws and federal anti-spam laws impose informational requirements on digital content in certain circumstances.
The consumer protection legislation of a number of provinces, including Ontario, British Columbia, Nova Scotia and Quebec, requires certain information to be disclosed in online consumer contracts. The information required to be disclosed in internet agreements under Ontario’s legislation includes:
- online retailer names;
- contact information;
- a fair and accurate description of the goods and services;
- an itemised list of prices;
- a description of each additional charge that applies or may apply;
- the total amount payable by the consumer;
- the terms and methods of payment;
- the details of delivery or performance (including date, place and manner of execution); and
- any specific rights or obligations with respect to cancellations, returns, exchanges and refunds.
CASL requires commercial electronic messages to include information such as sender identification, contact details and a simplified unsubscribe mechanism. CASL also generally requires prior express consent for the installation of a computer program on another’s computer system, which would include mobile apps. Federal guidance indicates that self-installed programs are not covered by the law, provided that the functionality of the program is clearly disclosed to the user prior to installation. Enhanced notification is required for a range of functionality commonly associated with malware, such as collecting personal information stored on the user’s device, interfering with the user’s control of the device, etc.
Liability for content
What rules govern liability for online or other digital content that is defamatory or infringes another party’s IP rights?
In the common law jurisdictions of Canada, the common law of defamation generally covers online content. To establish defamation, the relevant content must be defamatory, relate to the person claiming defamation and be published at least once to a third party. In Quebec, Article 1457 of the Civil Code of Quebec, which sets out the general rules of conduct applicable to all persons, is the basis of the law of defamation. The common law provinces also have defamation legislation, known either as the Defamation Act or the Libel and Slander Act.
In Canada, the federal Copyright Act governs the law of copyright, regardless of registration. The Parliament of Canada amended the federal Copyright Act in 2012, enacting provisions such as the “Notice and Notice Regime” requiring internet service providers (ISPs) to pass on notice of a copyright infringement to an infringing user. The Copyright Act describes infringing and non-infringing conduct in detail.
Although trademarks do not need to be registered in Canada, the federal Trade-marks Act generally covers trademark law in Canada, including offences relating to the improper use of trademarks.
How can liability be excluded or limited?
Liability can generally be limited or excluded in three ways. First, the requirements for the relevant offence should be considered. For example, a defamatory statement must objectively lower the respect for the plaintiff in the community. Second, there may be exceptions to the offences outlined above even if an offence is otherwise committed. For example, fair dealing allows users of copyright material to reproduce it for the purpose of research and education, under certain conditions. Third, trademarks can be licensed in Canada under the Trade-marks Act, allowing the use of a trademark without committing an offence.
Which parties can be held liable for defamatory or infringing content? Can contingent liability be extended to internet service providers (ISPs)?
The extent to which third parties such as ISPs can be held liable for defamation likely depends on whether they have engaged in re-publishing the defamatory content. For example, in one Canadian case, Crookes v Newton (2011 SCC 47), the Supreme Court of Canada held that simple hyperlinks to defamatory content will not constitute defamation.
The Copyright Act does not attribute liability to third-party conduits such as ISPs as long as they are acting as a neutral intermediary. However, these conduits may be liable and/or have obligations imposed on them if a party holding a copyright provides them with a notice of infringement. For example, under the Notice and Notice regime set out in the Copyright Act, an ISP would have to forward the notice to the infringing user and retain records to identify the infringing party.
There is no similar legislation for trademarks. Nonetheless, ISPs may be subject to court orders for injunctive relief, including removal of infringing content.
What rules and procedures govern content takedowns? Can ISPs remove defamatory or infringing content without permission?
The common law of injunctions governs content takedowns. A party will therefore have to obtain a court order to take down content infringing on its rights. There is no legislation requiring ISPs to take down content once they have received notice that the content infringes copyright, trademark rights or other IP rights. In a closely related development, the Supreme Court of Canada in Google Inc v Equustek Solutions Inc (2017 SCC 34) upheld an injunction issued by a lower court that effectively required Google to de-index certain IP-infringing content from its worldwide search results.
What rules, restrictions and procedures govern the licensing of domain names?
The Canadian Internet Registration Authority (CIRA) manages the ‘.ca’ country code through accredited registrars. CIRA has established several rules for the registration of ‘.ca’ domain names, including the Canadian presence requirements, which restrict registration to individuals and organisations that are sufficiently connected to Canada (eg, being a citizen or permanent resident, in the case of an individual). Corporations incorporated in Canada are also eligible, as are Canadian trusts, partnerships and unincorporated associations, provided that they meet certain tests. Of particular interest to non-Canadian entities is the provision permitting any holder of a trademark that is registered in Canada under the Trade-marks Act to apply to register the “exact word component” of the mark as a ‘.ca’ domain.
It should be noted that there is no requirement to use the ‘.ca’ domain names in Canada, and many businesses use ‘.com’ or other top-level domains (TLDs) in place of or in addition to ‘.ca’. Registration of a ‘.com’ domain name is effected in the same way as in other countries and does not involve CIRA.
How are domain name disputes resolved in your jurisdiction?
CIRA manages the rules and procedures for resolving ‘.ca’ domain name disputes under the Canadian Dispute Resolution Policy. A registrant must submit to a proceeding under the CIRA Dispute Resolution Rules if a complainant has asserted the following:
- the registrant’s ‘.ca’ domain name is confusingly similar to a mark in which the complainant had rights prior to the date of registration of the domain name and continues to have such rights;
- the registrant has no legitimate interest in the domain name as described; and
- the registrant has registered the domain name in bad faith.
In a recent situation that illustrates how these principles work, the global messaging platform Whatsapp was able to secure the ‘whatsapp.ca’ domain name from a cybersquatter who was found to have registered the name without a legitimate interest and in bad faith. The fact that Whatsapp, a US company, had registered its trademark in Canada was sufficient to satisfy the Canadian presence requirements referred to in the previous question. The matter was resolved by the British Columbia International Commercial Arbitration Centre, one of two designated resolution service providers for ‘.ca’ disputes, in addition to Resolution Canada Inc.
Disputes involving ‘.com’ and other generic TLDs are handled under generally applicable processes established by the Internet Corporation for Assigned Names and Numbers.
What special measures and safeguards should rights holders consider in protecting their online/digital content?
Generally, the best way to protect rights is through registration.
As for IP rights, registration will usually provide broader protection even if statutory protections apply to unregistered rights holders. For example, any party infringing on a registered copyright will be deemed to have knowledge of the copyright. Similarly, trademark registration will automatically give the holder nationwide protection whereas an unregistered trademark must have sufficient reputation in a geographic area to receive protection, creating ambiguities for online and digital content.
As for domain names, registration can protect the domain name for one to 10 years and can include common variations of the domain name as well a French version of the name (or English version of a French name).
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