Canadian Internet Law Update - 2015

This paper summarizes selected developments in Canadian Internet law during 2015. Internet law is a vast area that continues to develop rapidly. Reference to current legislation, regulatory policies, and guidelines and case law is essential for anyone addressing these issues in practice.

1. Trademarks

   Keyword Advertising

   Vancouver Community College v. Vancouver Career College (Burnaby) Inc., 2015 BCSC 1470, involved a dispute over the defendant's advertising and promotion of educational services in competition with the plaintiff's educational services. The plaintiff claimed that the defendant misrepresented the defendant's educational services as those of the plaintiff by using certain terms (including the plaintiff's trade name) as keywords for advertising on Internet search sites and by using the "VCCollege.ca" domain name. The plaintiff alleged passing off, and argued that the defendant's keyword advertising caused initial interest confusion. The court held that, for the purpose of assessing a likelihood of confusion, the relevant "first impression" occurs when an individual using an Internet search site accesses a listed website. The court reasoned that an Internet user understands that it is necessary to view a website to determine who owns the site, and it is at that point when the relevant first impression is made. The court concluded that the defendant's use of the plaintiff's trade name as advertising keywords did not cause confusion. The court also held that the evidence did not support the plaintiff's allegation that the defendant's use of the "VCCollege.ca" domain name caused confusion.

   Trademarks in Metatags

   Red Label Vacations Inc. v. 411 Travel Buys Ltd., 2015 FCA 290, dismissing appeal from 2015 FC 19, involved a dispute over the defendant's limited duration use in its travel business website of metatags (titles, descriptions, and keywords, including the plaintiff's trademarks) inadvertently copied from the plaintiff's travel business website. The plaintiff claimed that the defendant's use of the copied metatags constituted copyright infringement (discussed below), trademark infringement, passing off, and depreciation of goodwill in registered trademarks.

   The trial judge held that the use of the copied metatags, which were not visible to website users, did not create a likelihood of confusion required for a successful trademark infringement or passing off claim. The trial judge held that the concept of "initial interest confusion" was not applicable because, while metatags may influence Internet search results, those results present searchers with a choice of links to websites, rather than directing searchers to a particular website, and each searcher retains the ability to choose which website to access and which website to use to purchase goods or services. The trial judge reasoned that trademark infringement and passing off require confusion as to the source of the goods or services advertised on a website. For those reasons, the trial judge held that the use of a competitor's trademark or trade name in metatags does not, by itself, constitute a basis for the likelihood of confusion required for passing off or trademark infringement. The trial judge noted that the defendant's website was clearly identified, and there was no likelihood of deception as to the source of the advertised services. The trial judge held that use of trademarks in non-visible metatags did not support a finding of depreciation of goodwill. The plaintiff appealed.

   The court of appeal dismissed the appeal, primarily on the basis that the plaintiff failed to demonstrate that the trial judge made any palpable and overriding error in his determinative findings. Nevertheless, the court of appeal attempted to limit the scope of the trial judge's ruling regarding metatags. The court majority expressed the view (at para. 22) that "... in some situations, inserting a registered trade-mark (or a trade-mark that is confusing with a registered trade-mark) in a metatag may constitute advertising of services that would give rise to a claim for infringement ...". The concurring court of appeal justice stated (at para. 45): "The extent to which a trademark may be used in metatags without infringing the trademark is, of necessity, fact specific. These reasons ought not to be read as endorsing the Judge's remarks relating to 'initial interest confusion' or as endorsing every alternate basis on which the Judge dismissed the action".

   3. Infringing Domain Name

   British Columbia Recreation and Parks Assn. v. Zakharia, 2015 BCSC 1650, involved a dispute arising from the termination of the defendant's membership in the plaintiff Association. The defendant used the Internet to malevolently attack and defame the plaintiff and its chief executive officer. The defendant also registered and used the Internet domain name BCfit.ca, which incorporated the plaintiff's registered trademark BCFIT, for a website used to criticize the plaintiff association...