Canadian Internet Law Update – 2016

This paper summarizes selected developments in Canadian Internet law during 2016. Internet law is a vast area that continues to develop rapidly. Reference to current legislation, regulatory policies, guidelines and case law is essential for anyone addressing these issues in practice.

1. Intellectual Property - Trade-marks

   1. Court-ordered Domain Name Transfer

      Michaels v. Michaels Stores Procurement Co., Inc., 2016 FCA 88, involved a dispute over the use of the www.michaels.ca domain name that allegedly infringed Michaels Stores' trademarks and caused consumer confusion. Michaels Stores obtained default judgment against the appellants, including an order requiring transfer of the www.michaels.ca domain name to Michaels Stores. The appellants appealed and challenged the trial court's jurisdiction to order the domain name transfer. The court of appeal dismissed the appeal. The court confirmed that the trial court had jurisdiction to order transfer of the domain name pursuant to the Trade-marks Act and the Federal Courts Act, and held that the trial judge had not erred in exercising that jurisdiction. The court reasoned that the domain name was the mechanism by which Michaels Stores' trademarks were infringed and was the instrument of confusion in the marketplace.

   2. Infringing Website and Domain Name

      Thoi Bao Inc. v. 1913075 Ontario Ltd. (Vo Media), 2016 FC 1339, involved a dispute between two Vietnamese language news businesses. The plaintiff used the THOI BAO trademark and the www.thoibao.com domain name in association with its news business. Two former employees of the plaintiff established the defendant company and began operating a competing online Vietnamese language news website called TBTV, which used the www.thoibaotv.com domain name, included the plaintiff's trademarks in meta tags and hidden text, and redistributed the plaintiff's television shows and newscasts without authorization. The court held that the corporate defendant had infringed the plaintiff's trademark rights and violated the plaintiff's copyright in its daily news programs. The court held that the individual defendant had hands-on, personal involvement in the corporate defendant's infringing activities and therefore was personally liable. The court awarded the plaintiff $15,000 for trademark infringement (based on a royalty approach) and $10,000 statutory damages for two incidents of copyright infringement, but refused to award punitive damages on the basis that there was no evidence of malice, prolonged infringement, or profit. The court ordered the defendants to promptly transfer all infringing domain names and social media accounts to the plaintiff and granted an injunction prohibiting future...