Copyright 2011, Blake, Cassels & Graydon LLP
Originally published in Blakes Bulletin on Intellectual Property – Social Media Series, July 2011
With the continued growth of social media, it has become increasingly important for businesses to augment their plans to protect their intellectual property (IP) by developing a strategy for addressing violations of IP and other rights that take place on portals, such as FACEBOOK, TWITTER and EBAY, or blogs.
The potential areas of concern are wide ranging. The following are just some examples of the violations of IP rights that can occur in social media:
- copyright infringement, such as the unauthorized use of text, images, videos and audio;
- trade-mark infringement or passing off, through the unauthorized use of a trade-mark for goods or services or a company name in comments on blogs or by impersonating a business;
- violation of personality rights, such as the impersonation of an individual;
- defamation, for example by false postings about a person on blogs;
- trade libel, such as by false postings about a product on blogs; and
- misuse of confidential information, through the disclosure of trade secrets by employees.
Before any business can expect to enforce its IP rights on social media, it must develop a plan for detecting and monitoring abuses. Any good plan should involve educating employees and other representatives of the business on the importance of reporting any abuses of the IP rights of the business, and conducting searches on a regular basis for infringing activities.
The sheer volume of postings and other communications on social media has made it extremely difficult to keep pace with violations. For example, infringing copies of copyrighted works can be accessed and shared by thousands, or even millions, of Internet users.
It is therefore important to bear in mind that not all infringements are of equal concern. For example, many blog postings have a short shelf life, read by only a small number of people before being superceded or buried by more recent postings. Some postings, however, are very influential and are read by many people.
In some cases, a posting may be viewed many times because it is posted on a blog that has a wide readership or is otherwise influential. In other cases, a posting may be made on a site that does not have wide readership but the posting may attract additional readers because other users link to it or forward it to others, or the posting is picked up by traditional media, such as newspapers.
For these reasons, more and more companies are turning to online media monitoring services for help in tracking infringements and other violations of their IP rights. These services not only track references to a business across a wide variety of social media – including hundreds of social networking websites that may not appear in searches conducted on popular search engines – but also provide invaluable information on trends.
For example, a good media monitoring service can detect a sudden surge in comments on a particular company, such as postings to the effect that one of the company's products has been recalled or that the company may be in financial difficulty. Obtaining real-time information can often allow a company to take effective measures to prevent or limit violation of its rights.
Monitoring violations of IP rights includes collecting and maintaining evidence of these abuses for use at a later date. The fleeting nature of social media is both a curse and a blessing for rights holders. The blessing is that content that violates rights might be deleted from social media sites before they have been widely viewed, downloaded or shared.
The curse is that it can be very difficult to prove, at a later date, a violation that took place in the past but which has left precious little trace in its wake. For this reason, it is crucial that an IP rights holder take immediate steps to record and preserve evidence of infringing activity so that it can, if needed, provide evidence at a later date to establish that a violation occurred.
When a business takes steps to preserve evidence of infringement, it should consider who will likely be in a position to give evidence at a later date. For example, it can be advantageous to centralize the gathering of evidence of infringement so that evidence can, at a later date, be adduced through one or two witnesses rather than requiring a multitude of witnesses, each of whom will only testify as to one or two instances of infringement.
Once a business determines that its rights have been violated, the next step is to identify the infringer so that appropriate action can be taken. The anonymous nature of social media can make it difficult, but not impossible, to identify infringers.
In the case of a violation by an anonymous person, an IP owner will typically turn to the remedy of an equitable bill of discovery or to federal and provincial rules of civil procedure to obtain a court order requiring a third party, such as an Internet service provider, to disclose identifying information about the infringer. The reaction of Canadian courts to applications of this nature has been somewhat uneven.
In Mosher v. Coast Publishing and Google, the chief of the Halifax fire department sought a court order requiring the publisher of a newspaper to disclose information about two respondents that the applicant believed would lead to the individuals who authored allegedly defamatory statements in the newspaper. Both the publisher and Google advised the court that they would not appear in opposition to the application and that they would obey any order issued by the court.
The Supreme Court of Nova Scotia judge who heard the application granted a disclosure order, noting that "the court does not condone the conduct of anonymous internet users who make defamatory comments and they like other people have to be accountable for their actions."
However, only a month later, in Warman v. Wilkins-Fournier, a three-judge panel of the Ontario Superior Court of Justice took a stricter view of an application for a disclosure order. The plaintiff sued for defamation with respect to messages posted by eight defendants, under pseudonyms, on an Internet message board.
The operators of the message board permitted registered users to post messages on various political and social topics. The plaintiff sued not only the eight posters, whom it named as John Does in its Statement of Claim, but also the administrators and moderators of the message board.
The plaintiff sought from the operators of the message board the Internet Protocol addresses for the allegedly defamatory postings made by the John Doe defendants as well as the email addresses with which they registered as users of the message board and any subscriber data that they provided at the time of registration.
The plaintiff took the position that it needed this information so that it could identify the John Doe defendants and serve them with the statement of claim. The judge who heard the application for a disclosure order at first instance granted the requested order.
On appeal, the court considered submissions not only from the appellant operators of the message board but also from two intervenors, the Canadian Civil Liberties Association and the Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic. The primary issue before the court on appeal was whether, and to what extent, the court should consider privacy concerns when faced with a request for a disclosure order.
The court had no difficulty in concluding that an individual's right to privacy was protected under the Canadian Charter of Rights and Freedoms. The court then went on to hold that, in order to prevent the abusive use of the litigation process, disclosure should not be automatic where Charter interests are engaged. At the same time, the court also commented that, even if Charter interests are at stake, disclosure cannot be unreasonably withheld if it is required to prevent the "abusive use of the internet."
The court then held that the judge who heard the plaintiff's application for a disclosure order should have considered the following factors:
- whether the unknown alleged wrongdoer could have a reasonable expectation of anonymity in the circumstances;
- whether the plaintiff had established a prima facie case against the alleged wrongdoer and is acting in good faith;
- whether the plaintiff has taken reasonable steps to identify the anonymous party and has been unable to do so; and
- 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.
Going forward, a plaintiff seeking a disclosure order would be well advised to ensure that its evidence meets the stricter standard imposed by the Warman decision.
Enforcing IP rights on social media might at first blush appear daunting. However, with the development and implementation of a monitoring strategy for infringements on social media and by remaining familiar with the standards being imposed by Canadian courts for disclosure orders, an IP owner will be better positioned to enforce its rights.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.