Canadian telecommunications giant Research in Motion (RIM), which manufacturers the popular BlackBerry, has reportedly offered information and tools to assist India’s government in monitoring encrypted emails and messaging services ().����India, which had threatened to shut down the BlackBerry service, is the latest country to pursue access to user communications from RIM.�� Recently the governments of Saudi Arabia and the United Arab Emirates have also threatened to ban BlackBerry services unless RIM provides access to user data ().

The threat by foreign governments to ban BlackBerry services poses a serious danger to RIM.�� Competitors in North America continue to eat away at RIM’s once dominating grasp on the smart-phone market, and RIM wishes to expand in the global marketplace to further develop its customer base.�� The reported that during the last fiscal year, 37 per cent of RIM's $15 billion in revenue came from outside North America, up from 23 per cent about five years ago.�� The demand for security concessions from countries such as India may threaten to erode RIM’s customer base as smart-phone manufacturers Nokia and Apple have already lined up to move into this market.��

RIM, unlike rivals Nokia and Apple, controls its own networks, which handle encrypted messages through centres in Canada and the UK.�� Should BlackBerry service be restricted in India, Nokia and Apple would easily snatch up RIM’s market share. This is because Nokia and Apple rely on local telecommunications infrastructure to transmit their data allowing easy government oversight.�� As a result Nokia and Apple would not be subject to a similar ban, as proposed by the Indian government against RIM.��

India has suffered deadly attacks, by both home grown and foreign militants, with some regularity for years. Mohammed Ajmal Kasab, the lone surviving gunman in the 2008 Mumbai attack, told an Indian court that he and his comrades all had Nokia mobile phones ().�� India and other foreign governments are seeking access to encrypted Blackberry communication that could be used to coordinate national security threats.���� ��

In response, RIM has assured its customers ‘that it genuinely tries to be as cooperative as possible with governments in the spirit of supporting legal and national security requirements’ ().�� ��RIM stated that a foreign government’s access to BlackBerry communications should not be boundless, and ‘lawful’ access be limited by four principles.�� First, that access be restricted to the context of national security requirements as governed by the country's judicial oversight and rules of law.�� Second, government access to BlackBerry services should be no greater than regulators already impose on RIM’s competitors and other similar communications technology companies.�� Third, no changes will be made to the BlackBerry’s security architecture and finally that RIM will maintain a consistent global standard for lawful access requirements that does not include special deals for specific countries.

RIM and other companies will likely continue to work with foreign lawmakers in their respective countries to resolve national security concerns.�� However, in doing so RIM risks damaging an important aspect of its business, its reputation.

BlackBerry Messenger users have long enjoyed the secure end-to-end encryption methods used by RIM to scramble information sent from one RIM phone to another.�� However, as reported by the , RIM may have agreed to place a BlackBerry server inside Saudi Arabia and more recent reports indicate RIM may hand over the “codes” to all local BlackBerrys to the Saudi government.��Providing such information has drawn RIM into the ongoing debate of the morality and ethics of allowing foreign government access to communications that can be used to quell political dissent and imprison human rights advocates.�� The reported the comments of Ron Deibert, director of the Citizen Lab at the University of Toronto’s Munk School of Global Affairs: “These can be ruthless nasty regimes where political opposition or human rights advocates are imprisoned or worse. In colluding with them, [RIM is] assisting in that abrogation of human rights.”

Canada and the United States (U.S.) have aligned behind RIM against access to Blackberry communication, citing the need to defend consumer privacy and internet freedom ().�� The economic interests of Canada and U.S. are also at stake, which may have instigated the strong response by these countries against the proposed BlackBerry bans.�� Patrick Leblond, an expert on international economic integration and government-business relations at the University of Ottawa summarized Canada’s position “It is good business for the Canadian government to stand up for RIM, since this is one of the world's leading technological companies, and ‘what is good for RIM is good for Canada.’”������

RIM’s struggles with foreign governments to maintain its security systems and preserve its market share will likely expand to other forms of communication.�� Any concessions made by RIM may set a precedent for future negotiations between foreign governments and other communications companies.�� As reported by the , the Indian government is already considering a crackdown on Google and Skype to gain access to the information transmitted by these services. Moving forward, it will be interesting to observe the impact that RIM’s security negotiations will have on other communications based companies.

The post RIM’s Battle for Information Privacy, Market Share, and its Reputation appeared first on IPOsgoode.

Online keyword advertising, using internet search engines such as Google and Yahoo!, continues to be a highly contentious area of the law.�� Litigation involving trademark infringement by competing companies in keyword advertising campaigns continues in Canada and around the world.�� In Canada, it appears that competing companies are allowed to utilize each others’ respective trademarks as keywords for online advertising so long as the trademark does not appear within the sponsored link or advertisement ().�� On the surface, advertisers have great latitude to use competitors’ trademarks for keyword ads.�� Yet many jurisdictions around the world attempt to prevent ads that mislead customers or damage competitors’ trademarks.��

The European Court of Justice (ECJ) has addressed the issue of misleading keyword advertising on internet search engines in Portakabin Ltd and Portakabin BV v Primakabin BV.��

The plaintiff, ., is a manufacturer and supplier of mobile buildings and is the owner of the PORTAKABIN trademark for goods in both metal and non-metal buildings, parts and building materials.�� The defendant is a competing company that also manufactures and markets its own mobile building units, such as work shelters or temporary offices.�� Primakabin is also engaged in selling and leasing used units, including those manufactured by Portakabin.

The basis of the claim against Primakabin is that it paid to have its web address and company description posted as a sponsored link when users of Google typed in 'Portakabin' or misspellings of the word.�� The heading of Primakabin’s ad, which appeared once one of those words was entered into the search engine, was ‘new and used units’. Later Primakabin changed this to ‘used portakabins’.

Portakabin commenced its action against Primakabin seeking an injunction to prevent the use of its trademark as a keyword for Primakabin’s advertisements on Google’s internet search engine. ��Portakabin also sought relief from Primakabin’s use of its trademark when advertising second-hand Portakabin units. ����Portakabin’s claim alleged that Primakabin greatly benefited from online keyword advertising using the PORTAKABIN trademark to market used Portakabin models.�� Portakabin also stated that the use of its trademark as a keyword and within Primakabin’s ads mislead customers, ultimately damaging the value of the PORTAKABIN mark.

In response to the reference from the national court, the ECJ provided guidance to help determine when trademark owners may prevent the use of the mark by an advertiser.�� The ECJ stated that “a trade mark proprietor is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with, or similar to, that mark…where that advertising does not enable average internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or from an undertaking economically linked to it”

Building upon this test the ECJ clarified when a trademark owner may restrict the use of a mark as keywords for internet search engines, that was used without the consent of the owner and is identical with, or similar to the owner’s trademark.

The European indicates that the owner of a trademark is entitled to prevent use, without the owner’s consent, of that mark should the use adversely affect the function of that trademark.�� The Court, referring to case law, explained that if the ad suggests there is an economic link between the advertiser and trademark owner, or the ad is vague to the extent that the origin of the goods or services is thought to be linked to the trademark owner, the conclusion must be that there is an adverse effect on that function of the trade mark.

However, in contrast the ECJ indicated that the trademark owner “cannot oppose that use of the sign, identical with its mark, if that use is not liable to cause detriment to any of the functions of that mark”.�� This assessment, by the ECJ, indicates that the core of the national courts analysis must be to determine if the average internet user would be misled to think that the source of Primakabin’s advertisement was Portakabin.

If the national court finds that the ad does not allow the average internet user, or enables them only with difficulty, to determine whether the goods or services advertised originate from the trade mark owner or from a third party, it is unlikely that the advertiser can claim not to be aware of the ambiguity caused by the ad.�� The ECJ advised, in this circumstance, that because the advertiser has full knowledge of its economic sector and chose keywords corresponding to another company’s trade mark, the advertiser cannot, in principle, claim to have acted in accordance with honest practices in industrial or commercial matters.

Despite the potential that Primakabin’s advertising campaign has to mislead internet users, the ECJ observed that the sale of second-hand goods under a trade mark is a well-established form of business, with which the average consumer will be familiar.�� As a result, the ad will likely not create the impression that the reseller and the trademark owner are economically linked or that the ad is seriously detrimental to the reputation of that trademark.�� The ECJ concluded its explanation stating that without using the trademark, the reseller who markets second-hand goods under another person’s trade mark, will have difficulty communicating such information to his potential customers without using that mark.

The ECJ then went on to analyze how Primakabin’s conduct, as a reseller of used Portakabin units, influences the plaintiff’s claim.�� Portakabin claimed that Primakabin had removed any reference to the trademark PORTAKABIN from the used mobile buildings which it was selling and replaced it with the wording ‘Primakabin’.�� This practice of rebranding was later confirmed by Primakabin.��

When a product is rebranded by a reseller, without the consent of the trademark owner and resulting in the trademark of the manufacturer being entirely concealed, the ECJ advised the national court that the trademark owner is entitled to prevent the reseller from using that mark in its advertisements.�� The ECJ continued, stating that the use of the trademark by the reseller, in this circumstance, would damage the essential function of the trademark, which is to indicate the original origin of the goods.

This reference to the ECJ clarifies the ability of keyword advertisers to utilize competitor’s trademarks.�� The national court must now consider if Primakabin’s keyword advertisements mislead internet users as to the origin of the advertised goods.�� The national court must also weight Primakabin’s business practices of occasionally rebranding Portakabin’s units when determining if the value of the PORTAKABIN trademark has been damaged.��

Advertising on internet search engines should allow broad use of keywords, including trademarks, to provide customers the ability to view as wide a spectrum of products as possible.�� It is appropriate that the ECJ holds that advertisers may utilize trademarks as keywords for search engine ads, while granting trademark owners the ability to prevent the use of their mark in ads that mislead internet users, or damage the value of the trademark. This ECJ opinion appropriately outlines the boundaries that limit keyword advertisers from utilizing competitor’s trademark while balancing the rights of trademark owners and advertisers.

The post Keyword Advertising: When are competitors allowed to use your trademark? appeared first on IPOsgoode.

The race for political office is competitive and fraught with risk where adversaries seek out support by advertising and creating political platforms to appeal to the majority of voters.�� As the cost of political campaigns mount, politicians on the campaign trail seek advantages whenever possible.�� Pop culture and entertainment has increasingly captured public interest, and it is no surprise that actors, actresses, music and other aspects of pop culture have been incorporated into political campaigns as effective advertising tools.�� ��

Music in particular has been utilized to draw attention��from fans of the works of memorable artists.�� This can attract the ire of artists who neither endorsed nor allowed the use of their copyrighted music for political purposes.�� However, while legislation protects copyrighted works, fair-use exceptions for copyright infringement are granted in the U.S. when a parody is made of an artist’s work.�� It is this exception that some politicians have attempted to exploit when modifying music for political purposes.�� The U.S. District Court for the Central District of California decision in is an example of the intersection between the copyright exception granted for a parody and the modification of a musical composition for political campaigns.

The defendant, , is a California assemblyman who was seeking the Republican nomination for one of California’s U.S. Senate seats.�� To further his political campaign, DeVore revised the lyrics of “The Boys of Summer” and “All She Wants to Do Is Dance” which the plaintiff, , had written.�� These modified versions of Henley’s songs poked fun at Barak Obama, Nancy Pelosi, Obama’s supporters, and the Democratic Party against whom DeVore was competing for a U.S. Senate seat. ��Subsequently Henley battled to have the modified songs removed from and later sued for direct, vicarious and contributory copyright infringement, as well as trademark infringement and false endorsement under the .

DeVore attempted to counter Henley’s claims by asserting that fair use applies because his versions of the Henley’s songs were parodies.�� Both parties moved for summary judgment. ����The Court ruled that DeVore’s fair use defence was inadequate, largely because his work resembled satire rather than parody.�� Despite the defendants' assertions that the modifications to Henley’s songs were to create themes of ‘nostalgia’ and ‘disillusionment’ to mock Henley and other Obama supporters, and criticise previous American foreign policy, the Court found that DeVore’s work was satirical in nature.�� The Court distinguished satire from parody as previously explained in , which states that the parodist is justified in using the copyrighted work because a parody’s effectiveness “necessarily springs from the recognizable allusion to its object through distorted imitation...the parodist has no alternative but to use the work.” In contrast the satirist who ridicules subjects unrelated to the work lacks the same claim to use of the work, which the satirist “merely uses to get attention or to avoid the drudgery in working up something fresh.”��

In reaching its decision that DeVore’s modifications to Henley’s songs were not fair use, the Court conducted a which considered:��

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

Consideration of these factors influenced the Court to find that DeVore’s modification of Henley’s songs should not be considered fair use for the following reasons. ��First, the Court held that the defendant’s use of Henley’s songs was commercial in nature because DeVore stood to gain both publicity and campaign donations from their use of Henley’s music.�� Second, DeVore borrows from musical compositions that are highly expressive works, which are at the core of copyright law and deserve protection.�� Third, an extensive amount of content was borrowed from Henley’s compositions greatly weighing against the fair use defence.�� Lastly, the defendants were unable to show that their use did not harm the market for the plaintiff's work.��

This decision clarifies the extent to which a copyrighted work may be utilized to form a political critique in the U.S., and may prove influential for similar Canadian cases. ��Politicians and others who wish to utilize copyrighted works for political critique must now rethink these strategies and seek out alternative methods to convey their message.

The post Henley v. DeVore: Musical Copyright Protection and Political Parody appeared first on IPOsgoode.

Online advertising is a growing and lucrative business.�� In 2009, $22.7 billion USD was spent on online advertising within the U.S. which is to grow to $25.1 billion USD by 2010.�� A significant amount of this revenue is generated by Google, Yahoo and other search engines which allow targeted advertising linked to keywords entered when searching the internet.�� Advertising can be linked to any word, even those registered as trademarks for a competing company.���� This advertising technique allows the bidders to have their website posted as a sponsored link above the organic search results, potentially diverting customers away from the website initially sought after.��

is Canada’s first jurisprudence regarding keyword advertising on search engines.�� In this decision the (the Agency) sought a permanent injunction restraining (VCC Inc.) from attaching their advertising (i.e. being a sponsored link) to keywords that include the business names of other educational institutions.��

VCC Inc. is subject to the BC Private Career Training Institutions Act, and bylaw 29, passed under this Act, prohibits institutions such as VCC Inc. from engaging in advertising that is false, deceptive or misleading.�� The Agency alleged that VCC Inc.’s use of competitors’ business names as keywords in their Google or Yahoo advertisements was in violation of Bylaw 29, and was designed to mislead students seeking information about one institution, away from that institution, and towards one of its own.��

To further its argument, the Agency utilized two accounts of complainants being mislead by VCC’s advertising.�� The first complainant registered at VCC Inc. in error, thinking it was the , while the second sought information about the but selected the sponsored link of instead.�� Upon discovering her error the first complainant was given a full refund.��

In arriving at his decision Justice Gaul consulted Canadian Trade-mark jurisprudence and U.S. case law regarding advertising using keyword searches.�� Justice Gaul concluded that VCC Inc. had not misled the complainants and that VCC’s use of competitors’ business names, as keywords, within its internet advertising campaign did not contravene Bylaw 29.�� Justice Gaul found that the complainants “were not misdirected or led astray by anything other than [their] own oversight” (PCTIA v. VCC, para. 75) and��accepted as fact that VCC had not "ever used the names of competitors or trademarked terms in the title line, description line or URL of its online advertisements." (PCTIA v. VCC, para. 26).��

This decision is entirely appropriate.�� Consumers on the internet should always adopt a ‘buyer beware’ attitude, especially when browsing educational institution or other products on the internet.�� As long as a competitor’s business name is not used directly in the advertisement, this form of advertising is no different than placing an ad, next to a competitor’s, in the yellow pages, or newspaper.�� Providing a variety of options for consumers to consider, informs search engine users, allowing them to make informed decisions regarding which products to buy or what school to attend.�� This free market approach to keyword advertising on search engines benefits both advertisers and consumers and is a solid precedent for the rest of Canada to follow.

The post Online Keyword Advertising: Misleading Customers? Or Providing Alternatives? appeared first on IPOsgoode.

Technology plays an important role in today’s educational institutions by providing easy access to and distribution of music, art, literature and other information that forms the foundation of a person’s education.���� Yet the innovation and technological advances that have created powerful teaching tools, such as the internet, have significantly surpassed the antiquated version of the which only contemplates a limited means of communicating information such as using dry-erase boards, flip charts and other hand-written methods.

As the capability to access and distribute information increases, creators of art, texts and other copyrighted information seek greater protection for their works which are destined for use in classrooms or by consumers.�� Ultimately the result of the outdated Copyright Act is that educators have little statutory guidance regarding their ability to use the internet and other modern technologies to provide an education.

The ambiguity surrounding access to and distribution of copyrighted material for educational purposes will be addressed in Parliament’s latest attempt at amending the Copyright Act in .�� ����For instance in Bill C-32, ‘education’ has explicitly been incorporated into the exceptions to copyright infringement.�� This clarifies that educators and students will have the ability to utilize copyrighted material for educational purposes, assuming that the criteria for fair dealing as set out in are met.�� ��The addition of ‘education’ may allow for a liberal application of fair dealing to educational institutions, however to be certain, future judicial interpretation of the new fair dealing provision would be required.�� (For information on the differences between fair dealing in Canada and fair use in the United States, see the prepared by the Association of Universities and Colleges of Canada).

The outdated Copyright Act has also created ambiguity in the requirements for presenting copyrighted works in a classroom setting.�� Current copyright law limits reproduction of material, for the purpose of educating, to technology such as dry-erase boards and overhead projectors. ��The use of modern technology, as an educational tool, has created ambiguity which Bill C-32 seeks to clarify. ��It is proposed that an educator may now use ‘any means’ available to reproduce a work in order to display it for an educational purpose.�� Thus educators will be given greater freedom to display works in a classroom setting, using any technology available.�� This flexible approach to utilizing technology in a classroom will also extend to online education.

The growth and popularity of the internet has naturally created methods where an entire or part of an education is taught online in virtual classrooms or through electronic correspondence.�� This method of education, in the past, has existed as a grey area in the law which now will be illuminated by Bill C-32.�� Educators will now be permitted to communicate lessons electronically and students participating or corresponding by telecommunication (i.e. online) in lessons, like students writing notes in a classroom, will be able to reproduce the lessons for use at a later time. ��However, reproducing online lessons is limited by the requirement that both educators and students destroy any reproduction of a lesson within 30 days after the students receive their final evaluation for the course.�� The educational institution must also take measures to restrict communication of lessons only to the participating students, and prevent the lessons from being reproduced digitally or used by those other than the intended student.

Creating digital copies (i.e. scanning) from the paper version of copyright protected works has also been clarified in the proposed amendments to the Copyright Act.�� Scanned copies of protected works, by educational institutions, can be communicated to persons acting under the authority of the institution��and then converted into ‘one’ hardcopy by that person for an educational or training purpose.

The flexibility granted to educational institutions to make digital copies of works is progressive, but is limited in certain circumstances.�� First, when digital copies of works are created from paper versions and subsequently distributed, the educational institution must then pay the appropriate royalties to the collective society for each person to whom the work was distributed.�� Second, educational institutions must endeavour to prevent further reproduction (i.e. digital or paper copies) and communication of the digital copy to any person not acting under its authority.�� The institution must also ensure that the persons to whom the works are communicated may only make one copy.�� Third, digital reproduction of a work can be prevented if the copyright owner instructs the collective society, from which the works are taken, not to allow the digital reproduction of the work.

Finally, Bill C-32 will clarify the regarding the extent to which teachers, students, and other educational users can legally engage in routine classroom activities involving the use of text, images, or videos that are freely available on the Internet.�� Bill C-32 will allow educational institutions and their staff to reproduce and communicate any work available on the internet for educational purposes.�� This use of the internet is subject to the requirement that the source and respective author, performer, maker, or broadcaster is mentioned.�� ��This greatly increases the ability of educators to utilize any information found on the internet to instruct and educate students.�� However, broad access to works or subject matter on websites is limited in certain circumstances.�� Websites to which access is restricted does not fall under this expanded allowance for educators and students to access works on the internet.�� Also, if the educational institution or people acting under its authority know or should have known that a copyright was infringed upon when the work was placed on the internet, they should not use it.�� This can be particularly important when using works available on youtube, BitTorrent or other sites where copyrighted material can potentially be viewed or distributed.

The clarification and enhancement of the Copyright Act provisions, by Bill C-32, relating to educational institutions, is a welcome change from the current outdated act.�� These changes properly recognize the important role that educators play in our society and grant them the ability to utilize modern technology to access, distribute and display copyrighted works for educational purposes.

The post Bill C-32: Copyright and Education in the Digital Age appeared first on IPOsgoode.

On May 12, 2010 the Enlarged Board of Appeal of the European Patent Office (EPO) responded to several questions posed by the President of the EPO, Ms , regarding the patentability of computer programs in Europe.�� The resounding answer to these questions, provided by the Enlarged Board of Appeal, was that they are inadmissible and that the status quo should prevail.��

In constructing , the Enlarged Board of Appeal cited that the purpose of the European Patent Convention (EPC) is to establish uniformity of law within the EU patent system.�� The only way the Enlarged Board of Appeal can partake in the development of law is in instances of conflict between existing precedents, whereby the board may break with existing practise and point the development of law in a new direction.�� The President’s questions posed to the Enlarged Board of Appeal did not address conflicting decisions in the patent system, and were thus inadmissible.

While the Enlarged Board of Appeal did not deviate from current case precedents in Europe, it did clarify and provide guidance regarding the interpretation of leading cases in the European patent system.�� ��Under the EPC, computer programs are listed among the categories that are not patentable subject matter.�� However, while patents explicitly claimed as computer programs are not patentable, programs that are part of a computer, network or other programmable apparatus’s scheme are not excluded and may be patentable as a .��

The Enlarged Board of Appeal clarified that according to the (Microsoft) decision a program on a computer-readable medium is not excluded from patentability.�� So long as either the computer-readable medium or the program it contains has a technical effect, it will not be excluded from patentability.�� The final question, before granting a patent then, is to consider whether the computer program or computer-readable storage medium which contains it, has an inventive step.���� ��

While a computer program on a computer-readable medium is not excluded from patentability, the Enlarged Board of Appeal did state that simple patent claims for a program on a computer-readable storage medium or method of operating a computer will still fail to be patentable for lack of an inventive step. ����To be patented, the programmer must construct a program/procedure which a machine cannot only carry out, but must make a non-obvious technical contribution, or solve a technical problem.

This decision by the Enlarged Board of Appeal likely disappointed many who hoped for a change to exclude the patentability of all computer programs in Europe.�� Many consider software patents to be broad and trivial by nature, and that these patents harm the economy by stifling innovation and growth.�� Because the work of a programmer is already protected by copyright, detractors of the software patent system argue that patents in this area are often used to restrict the interests of software producers in favour of patent producers.�� Alternatively, proponents of software patentability cite that these patents will promote economic growth by encouraging investment in research and development, and increase the valuation of small companies who can protect their market-share using patents to challenge larger companies and thus increase competition.��

Europe’s software patent policy currently has settled on a restrained approach to granting software patents, where computer programs must have a technical characteristic as part of a larger computer or network scheme.���� While proponents and detractors of software patents had hoped the Enlarged Board of Appeal would reform Europe’s patent system, clinging to the status quo has done little to satisfy European software developers’ appetite for change.���� All eyes are now on the US Supreme Court and their upcoming decision in to provide guidance for the development of software patent law in North America, Europe and around the world.

The post Patentability of Computer Programs in Europe appeared first on IPOsgoode.

The internet provides an ideal environment for users to express themselves, their ideals and concerns.�� This expression is valued by society and enshrined in the Canadian Charter of Rights and Freedoms which protects various rights and influences the interpretation of Canadian law.������ However, protecting expression can be limited in certain circumstances, such as in cases of defamation.�� The internet can be used as a tool for defamation, as it allows users to widely disseminate information anonymously that is false or misrepresents someone’s words or actions.��

Hiding behind the cloak of anonymity, afforded by the internet, allows users to strike out against others with apparent impunity, as their identity is likely only known by Internet Service Providers or the websites used to post the information.������ To counter the ability of internet users to defame others, plaintiffs such as have brought defamation claims in order to expose anonymous John Does.����These claims require judges to carefully consider the conflicting interests of privacy, freedom of expression and disclosure of information leading to the identification of John Does.��

The Ontario Divisional Court decision in considered the appeal of a court order requiring the appellants, administrators of the website , to disclose all information in their possession regarding eight anonymous John Does, including their email addresses and the internet protocol address used to make alleged defamatory postings.�� The issue in the proceeding was to consider whether required automatic disclosure of identifying information in internet defamation cases, which is not protected by privilege, or whether the Court must also consider the interests of privacy and freedom of expression of the John Doe Defendants.�� Ultimately, even though the Charter does not apply to strictly private litigation, the Court decided that because the Rules of Civil Procedure have the force of a statute, they must be interpreted in a manner consistent with Charter values.�� Thus, freedom of expression and privacy must be considered, and disclosure of a John Doe’s identifying information is not automatic.��

After discussing the Charter values of freedom of expression��and privacy, and��balancing these with��the public interest of disclosure in internet defamation cases, the Court in next considered how to apply these factors in the context of an on-going action where a motion for disclosure is made using Rule 30.06 of the Rules of Civil Procedure.�� In order to prevent the abusive use of the litigation process the court identified the risk that:

Plaintiffs with no legitimate claim could misuse the Rules of Civil Procedure by commencing an unmeritorious action for the sole purpose of revealing the identity of anonymous internet commentators, with a view of stifling such commentators and deterring others from speaking out on controversial issues. (Warman, para 33).��

While imposing a standard requiring a plaintiff to establish a prima facie case of defamation prior to disclosure of identifiable information would prevent frivolous or malicious claims from stifling expression, it is also essential not to prevent plaintiffs from accessing evidence that could strengthen their case as a result of knowing the identity of the defendant and the nature of their involvement.��

To ground the consideration of Charter values in Canadian law, the Court next relied upon the case of Norwich Pharmacal Co. v. Comrs. of Customs and Excise, [1974] A.C. 133 (H.L.) which established 'pre-action' discovery criteria to permit a plaintiff to discover the identity of a proposed defendant.�� The Norwich criteria have been incorporated into Canadian law and have been upheld by the Ontario Court of Appeal in and the Federal Court in . ����The Norwich criteria allowed the Court in Warman to establish four considerations:

1. whether the unknown alleged wrongdoer could have a reasonable expectation of anonymity in the particular circumstances;��
2. whether the Respondent has established a prima facie case against the unknown alleged wrongdoer and is acting in good faith;��
3. whether the Respondent has taken reasonable steps to identify the anonymous party and has been unable to do so; and��
4. whether the public interests favouring disclosure outweigh the legitimate interests of freedom of expression and right to privacy of the persons sought to be identified if the disclosure is ordered.

������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������������[Warman, at para. 34]

This decision unlike the standard in Norwich jurisprudence which requires only a bona fide standard, suggests that a prima facie standard is appropriate in certain circumstances.�� In defamation cases there is little danger a plaintiff will not know the actual case it wishes to assert, as he or she will know the precise details of what was done by each of the anonymous alleged wrongdoers.�� The chilling effect on expression and erosion of the privacy interests of the defendants which would result from disclosure also strengthens the case for the higher prima facie standard. ��

The careful consideration of privacy, freedom of expression and the public interests advanced by exposing alleged proponents of defamation proposed in Warman is appropriate as it incorporates important policy considerations into the determination of when disclosure is appropriate under the Rules.�� The reversal by the Court of the dangerous set by the motions judge, which presumed an entitlement to disclosure as a result of the commencement of a legal proceeding, corrects the misconception that disclosure in discovery is automatic.�� This decision is an important precedent for future pre-trial discovery proceedings as it helps preserve anonymous expression that forms a fundamental part of the internet.

The post Patching the Cloak of Anonymity: The Freedom of Expression, Privacy and Defamation Law appeared first on IPOsgoode.