Canada’s First Judgment on Intellectual Property and the Internet

Earlier this year, the Supreme Court of British Columbia delivered Canada’s first trial judgment regarding intellectual property rights in the context of the Internet. The case, BCAA v. Office and Professional Employees’ International Union, arose out of a strike by employees of BCAA. The union set up a series of protest websites similar to the BCAA website to spread its views.

The union’s original protest website copied the metatags and the layout of BCAA’s website, and contained trade-marks owned by BCAA. It used the domain name “bcaaonstrike.com”. Later versions of the website contained fewer of BCAA’s trade-marks and metatags.

BCAA sued, claiming that the website’s domain name and metatags, by themselves or in combination with the layout of the website, constituted the tort of passing-off and trade-mark infringement, and that the colours, layout and functionality of the website constituted copyright infringement. Since no Canadian cases had yet dealt with these issues, the court obtained guidance by reviewing several cases from the United States and the United Kingdom.

Passing-Off and Trade-mark Infringement
The court held that the union’s original website did constitute passing-off, as its close similarity to the BCAA website would have caused confusion to the public about the source of the website.

However, the later versions of the website were held not to constitute passing-off. Some of the factors that shaped the court’s decision included the following:

  • The union’s domain name included ‘bcaa”, a trademark of BCAA, but because of the addition of the phrase “on strike” it was not identical to BCAA’s trade-mark
  • The union was not selling competing services, but was exercising its right to free expression guaranteed by the Charter of Rights and Freedoms
  • The subsequent websites included express disclaimers that they were not connected with BCAA
  • BCAA did not provide any evidence of any user actually being confused about the source of the website.

Copyright Infringement
The court agreed with BCAA that the unique design of BCAA’s website was an “artistic work”, and that the union’s substantial copying of the design by the union for its site constituted copyright infringement.

However, because BCAA could not prove that it had suffered any actual losses as a result of the union’s activities (through loss of business, confusion to the public, or damage to reputation), the court awarded only nominal damages of $2,500.

This case has important implications for intellectual property and e-business owners, and is sure to form a cornerstone of future Canadian jurisprudence in this area.