BCAA et al. v. Office and Professional Employees’ Int. Union et al.


Supreme Court of British Columbia

CITATION: BCAA et al. v. Office and Professional Employees’ Int. Union et al., 2001 BCSC 156
DATE: January 26, 2001
DOCKET: C992100


BETWEEN:
 
 
 
British Columbia Automobile Association and Canadian Automobile Association
 
 
 
Plaintiffs
and
 
 
 
Office And Professional Employees’ International Union, Local 378, Ronald Tuckwood, John Doe, Jane Doe and other persons names unknown who have authored works that infringe copyrights owned by the British Columbia Automobile Association
 
 
 
Defendants


REASONS FOR JUDGMENT:
J.S. Sigurdson, J.

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 INTRODUCTION

[1] This case concerns claims of passing-off, trade-mark violation and copyright infringement in relation to the defendant’s websites on the internet.

[2] The British Columbia Automobile Association ("BCAA") (the plaintiff) claims that the defendant Union (the defendant), representing some of its employees, established websites that have in different ways infringed the plaintiff’s copyright by copying from the plaintiff’s website, and incorporating into the defendant’s website, various design elements, including registered trade-marks and other indicia. The plaintiff also says that the defendant, through a progression of websites, has committed the tort of passing-off and has depreciated the goodwill associated with the plaintiff’s trade-marks by using its domain names and meta tags.

[3] BCAA is a not-for-profit organization and a member of the other plaintiff, the national Canadian Automobile Association (CAA). BCAA is licensed to use the national association’s trade-marks. The defendant, the Office & Professional Employees’ International Union, Local 378 (the "Union"), is a trade union that represents some BCAA employees in various service centres throughout British Columbia. In January 1999, BCAA employees represented by the Union began lawful strike action. The other defendant, Ronald Tuckwood, is the past president of the Union. For ease of reference I will refer to both the plaintiffs and the defendants in the singular.

[4] Although BCAA had a presence on the internet as early as 1992 and a website in 1995, in 1997 the plaintiff designed and started to use a new website. In March 1999 the Union created a similar looking website. After complaint from the plaintiff, the Union amended that site somewhat in April 1999 and later adopted a significantly different website in October 1999. For ease of reference I will refer to the BCAA 1997 design as the 1997 website and the present BCAA site as the current site. I will refer to the three Union websites as the first or original site, the second or revised site and the third or new site.

[5] The plaintiff alleges wrongful conduct in three categories, namely:

[6] The plaintiff’s application is under Rule 18A. It seeks, among other things: damages, a declaration, a permanent injunction, an order for delivery up of infringing materials, and an order to cancel or transfer to the plaintiff the domain name registrations incorporating any of the plaintiff’s trade-marks.

 FACTS

[7] The Canadian Automobile Association ("CAA") is an organization well known for services that it provides to the motoring public. It also provides services to member organizations, of which the plaintiff BCAA is one.

[8] CAA evaluates and certifies businesses that cater to travellers. BCAA became a regional association in May 1975.

[9] BCAA sells and otherwise provides services and products to its members in its region and to the public at large. These include emergency road services, travel agency services, the sale of insurance, travellers cheques, magazines and travel books. The plaintiff also provides information and services at its internet website.

[10] Under an agreement with CAA, BCAA is licensed to use the National Association’s trade-marks and to license others to do so. CAA and BCAA carry on business in association with a number of trade names, trade-marks and certification marks. Since at least 1975 and continuing to the present day, BCAA has used the acronym "CAA" as a trade name and trade-mark, and "BCAA" as a trade name and trade-mark.

[11] The BCAA and CAA trade-marks and the CAA Logo are registered in the Canadian Intellectual Property Office as trade-marks in association with services and products and as certification marks certifying standards for wares and services.

[12] BCAA has used the trade-marks and the certification marks extensively in association with its products and services since at least as early as April 1983. BCAA displays the BCAA and CAA trade-marks and the CAA Logo prominently in its advertising, promotional material and publications, on its internet website and on material and information published on its internet website.

[13] BCAA has approximately 24 offices. The Union represents approximately 170 office employees of BCAA. The plaintiff employed a total of 943 people as of 1998. Mr. Tuckwood was the president of the Union from about January 1999 until April 30, 1999.

[14] In January 1999, BCAA employees represented by the Union took strike action at ten unionized offices. The dispute concerned the negotiation of a first collective agreement.

 The Internet

[15] The parties filed an agreed statement concerning the internet. I will paraphrase it.

[16] The internet is an international network of computers that communicate with each other according to certain protocols. Every computer participating in the internet is assigned a particular alpha-numerical address that has no other meaning in any human language (an "Internet Protocol Address").

 Domain Names

[17] Businesses and people may secure domain names that are usually shorter than Internet Protocol Addresses and have meaning in one or more human languages ("Domain Names"). Domain Names are "mapped" to particular Internet Protocol Addresses so that an internet user can reach a particular computer.

[18] Domain Names have two key components, namely the top level domain name ("TLD") and the second level domain name ("SLD"). The TLD consists of two or three letters located at the far right of any domain name preceded by a decimal point. Examples include ".com", ".net", and ".ca". SLDs must be registered with non-governmental registrars in combination with a particular TLD. For example, a law firm Jones & Company uses the second level domain name "jones" and has registered that SLD with the .ca Domain Registrar resulting in the combined domain name "jones.ca". SLDs must be registered in conjunction with TLDs. Hence, one may register "jones.ca", "jones.com", or "jones.net".

[19] The most important functions of Domain Names are as website addresses and e-mail addresses.

[20] Website addresses are identified by a uniform resource locator ("URL"). Most URL’s begin with the letters "www", which represents the World Wide Web. Those three letters are usually added to the SLD and the TLD to form the main portion of a URL. Following the example of the Jones & Company’s Domain Name, Jones & Company’s URL is "www.jones.ca".

 Websites and the World Wide Web

[21] The World Wide Web is comprised of electronic documents called "webpages". Webpages are stored on computers known as "servers". A "website" is a collection of related webpages stored on a single server. A "homepage" is the "front door" of the website.

[22] The programming language used to create the content, design and overall layout of individual webpages is known as "HyperText Markup Language" or "HTML".

[23] Computer programs known as "browsers" are used on a searcher’s computers to read HTML information and interact with it. The browsers read the website coding to display designs and text on the user’s computer screen.

 Accessing Websites

[24] Internet users can access websites in three main ways. First, if the user knows the URL of a particular site, or is able to guess it and add a convention such as ".com" or ".ca", the user can access the website directly by typing in the URL on the user’s browser. Second, the URL can be added to the "bookmarks" stored on the user’s browser. Third, a user can locate and access a website through the use of search engines and directories, which are common tools for finding information and websites.

 Search Engines and Search Directories

[25] A search engine uses specialised computer programs sometimes called "spiders" or "crawlers" to electronically visit websites, gather relevant data about those websites, and compile and index the information.

[26] Directories only list information about websites that is intentionally entered into the directory. A business may register information about its website with a directory.

[27] To use a directory or search engine, the computer user must access the website of a directory or search engine. There the computer user will find a space in which a search query can be entered, usually one or more key words. When a search is activated using a search engine or a directory, the search engine then compares the words used in the search query with information stored and indexed by the search engine or directory and ranks stored data about web pages according to relevance established by reference to the key words entered in the search. Relevance is determined in various ways, including the frequency matching key words appear on the webpage and the particular location of matching key words on a webpage.

[28] Based upon its own program for ranking websites according to search queries, each search engine and directory will generate the search results, which are a list of websites. These results are displayed. The search engine or directory is programmed to rank websites in order of relevance.

[29] Each listed website is assigned a number ranking and is usually accompanied by descriptive information to describe the contents of the website.

[30] Websites identified in search results include hyperlinks which, when clicked on by the searcher, connect the searcher to the particular website.

[31] Operators of websites usually want to encourage visits to their websites. One technique is to register a website with search engines and directories. Websites can be registered with a number of different search engines and directories. Another technique commonly used by website operators to encourage visits to their website is to utilize a URL that reflects the identity of the site operator so that internet users can readily locate the site without the use of a search engine or directory.

 Meta Tags

[32] A meta tag is part of a website not automatically displayed on the user’s computer screen in the normal course of viewing a website. A meta tag is put on the website by the website owner to provide key information about the website. Through the use of meta tags, a website creator can describe what is available at that particular site or insert any other information. A meta tag is written in HTML.

[33] When search engines gather information they seek out and obtain the information in the meta tags. Meta tags are used by most search engines and directories to gather information, index a website and match the website to the key words in a user’s query. This generates search results corresponding to the user’s query. It is common to use meta tags to specify key words that will be matched to key words entered by someone conducting a search.

 The Parties’ Presence on the Internet

 The various websites of the plaintiff and the defendant

[34] BCAA first took steps towards going on the internet in July 1992. It registered the domain name "bcaa.bc.ca" with the .CA Domain Name Registry. In November 1997, BCAA registered the domain names "bcaa.com" and "bcaa.org" with the InterNic Registry.

[35] Through their website BCAA allows people to apply "on-line" to become members or to renew their memberships, subscribe for travel packages, purchase merchandise, and to link with other websites.

[36] There have been three different designs of BCAA’s website. The original design was implemented in March 1996 and is not in issue in this action because a newer version was in place by the time the Union put a website on the internet. Since March of 1996, members of the public have been able to access the BCAA website using the URL "www.bcaa.bc.ca".

[37] In 1996 BCAA decided to revamp the original design of the BCAA website. In November 1996 BCAA retained Habanero Studios Limited to create a new graphic design and look for the BCAA website.

[38] The second version, or the BCAA 1997 website, came into existence in March 1997 and is of primary importance in this litigation. In November 1997 the public could also access the BCAA website using the URLs "www.bcaa.com" and "www.bcaa.org".

[39] In March 1999 the Union established a website. It registered the domain names "bcaaonstrike.com" and "picketline.com" with the InterNic Domain Name Registry. The website was accessible by "www.bcaaonstrike.com" and "www.picketline.com".

[40] In July 1999, following the Union’s first two websites on the internet, the BCAA 1997 version was replaced with the plaintiff’s current website.

[41] There have been three different designs on the Union website. The first, or original design, was used from March 1999 until about April 26, 1999. For the following six months, between approximately April 26, 1999, and October 15, 1999, the Union adopted a second, and somewhat different version of the original Union website. On October 18, 1999, the current version was implemented.

[42] On February 8, 2000, the Union registered the domain name "bcaabacktowork.com" and, shortly thereafter, the Union website could also be accessed by the URL "bcaabacktowork.com" in addition to "bcaaonstrike.com".

[43] The plaintiff claims that the original version of the Union website included fundamental design elements copied from the 1997 BCAA website design, including: the shape, structure, colour scheme and lay-out of the website; the placement of the CAA Logo (although inverted in the Union website design); the appearance, placement and juxtaposition of the words "BCAA ON-RAMP" (although the Union website design replaced "ON" with "OFF"); and the format, lay-out and colour scheme of the materials that appeared within the frames of the website.

[44] The original version of the Union website had the title, "Greetings, BCAA is on strike".

[45] On April l9, 1999, BCAA’s lawyers asserted that the Union was using their client’s intellectual property on their website and demanded that they stop.

[46] In response, on April 26, 1999, the Union changed its original website in the following way:

[47] Subsequently, on October 18, 1999, the Union altered the second version of its website and their meta tags in the following manner:

[48] The third or current Union website continued to reproduce a substantial part of the BCAA website meta tags. This website could be accessed at "www.bcaaonstrike.com"; "www.picketline.com"; and "www.bcaabacktowork.com".

 Discussion of the Claims

[49] The plaintiff is seeking a final determination of the following claims:

[50] I have chosen to discuss the claims in the following manner. I will deal first with what I see as the live current disputes between the parties. The plaintiff complains that the current Union site is a passing-off and a violation of s. 22 of the Trade-marks Act. The plaintiff does not allege that the defendant’s current website amounts to a breach of copyright, a claim it advances against only the first two Union sites. The passing-off claims however arise in connection with all three Union sites.

[51] I will deal first with the third Union site where the passing-off does not relate to the get-up or the design of the website but only relates to the defendant’s use of domain names and meta tags. Second, I will deal with the claim under s. 22 of the Trade-marks Act,which is a claim in connection with all Union sites. Third, I will deal with the copyright claim which arises in connection with the first two but not the current Union site. I will at the conclusion of these reasons deal with the first two sites where the question of the look of the website also forms part of the claim for passing-off.

[52] Finally, I will discuss the plaintiff’s claim for damages, a declaration or injunction, and for relief against the personal defendant.

 Passing-Off - The Current Union Site

[53] First I will discuss the passing-off action in relation to the current site. Here the allegation relates to the domain names and the meta tags. This, and the alleged trade-mark infringement are the current friction points between the parties.

[54] I will first discuss the law of passing-off.

 The Law of Passing-Off

[55] The tort of passing-off can occur in different ways. In National Hockey League v. Pepsi-Cola Canada Ltd. (1992), 42 C.P.R. (3d) 390 (B.C.S.C.), affd. (1995) 59 C.P.R. (3d) 216 (B.C.C.A.), the Courtindicated that passing-off cases fall into two broad categories. At trial, Hardinge J., whose judgment was affirmed by the Court of Appeal, said that the first type of case is:

  A second type, which is perhaps a more common type of passing-off was described to exist:

  [at page 401]

[56] Stromberg-Stein J. in Greystone Capital Management v. Greystone Properties Ltd. (1999), 87 C.P.R. (3d) 43 (B.C.S.C.), heard a case concerning an allegation of passing-off in the business association or business connection sense. She summarized the leading authority this way:

  [at page 50-51]

[57] Wallace J.A., in Westfair Foods Ltd. v. Jim Pattison Industries Ltd. (1990), 30 C.P.R. (3d) 174 (B.C.C.A.), said:

  [at page 180]

[58] In Draper v. Trist, [1939] 3 All E.R. 513 (Eng.C.A.), the Court stated that it was not necessary to prove actual damages:

  [at p.526]

  The Court of Appeal confirmed this in Visa International Service Assn. v. Visa Motel Corp (1984), 1 C.P.R. (3d) 109 (B.C.C.A.), affirming (1984), 1 C.P.R. (3d) 109 at 112 (B.C.S.C.), where at pages 118-119, the court said:

[59] The necessary components of passing-off therefore are the existence of goodwill, the deception of the public due to a misrepresentation and actual or potential damage.

 Why the Current Union Website is Alleged to be a Passing-off

[60] The plaintiff says that the use of the domain names "bcaaonstrike" and "bcaabacktowork" and the words in the meta tags constitute a passing-off. This assertion is made independent of the look of the website. It is asserted that the defendant is intercepting people intending to search for BCAA, that such conduct is confusing and constitutes the tort of passing-off. The plaintiff argues that the question of whether there is a misrepresentation must be assessed on the basis of first impression and general recollection of the computer user. They say that if you show likely confusion, that is enough and actual confusion is not necessary.

[61] The plaintiff argues that the use of the meta tags, which contain references to the plaintiff and its business, is to trick searchers for the BCAA website to go to the Union website. The plaintiff’s objection is not to the reference to BCAA as such but to the use of the term or word BCAA as an "indicator of source". For example, they point out that the meta tags of the Union website begins with the following phrase,

  This, they submit, implies that it is a BCAA site, or is somehow sponsored or connected with BCAA.

[62] The meta tags, as I said in the description of the internet, provide search engines with key words associated with a website and a brief description of the website. The defendant described its use of the meta tags in the following way:

  It should be noted that the meta tags used by the defendant have varied somewhat over time.

[63] In October 1999 the Union website was substantially amended to delete many of the references to the trade-mark BCAA and other trade-marks within the Union website meta tags. The meta tags in the Union site no longer include the trade-mark BCAA by itself, the phrase BCAA "off-ramp", the acronyms CAA and AAA and substitute the words "British Columbia, Automobile, Association" for British Columbia Automobile Association, and BCAA ON STRIKE.

[64] Notwithstanding these deletions, the plaintiff says the nature of the meta tags used by the Union is descriptive of the defendant Union’s intention. The plaintiff argues that the current websites have the domain names "www.bcaaonstrike.com" and "www.bcaabacktowork.com", but have nothing that indicates to the unsophisticated user of the internet that these websites belong to anyone other than the British Columbia Automobile Association. Therefore, the plaintiff says there is a misrepresentation that the Union website is either a British Columbia Automobile Association website or is affiliated or supported by it and the use of the trade-mark BCAA in the website domain name or in the meta tags is an "indicator of source" and a passing-off.

[65] The plaintiff argues that there is likely confusion. It argues that people searching for BCAA will get mixed up and be diverted to the wrong site. It contends that the terms "BCAA On Strike" and "Greetings BCAA Is On strike" are inherently deceptive given that only a small portion of the workers were on strike and the company itself cannot be on strike.

[66] The defendant, not surprisingly, disagrees. It says that there is no possibility that the Union website could have misled or deceived anyone in the public either that the website was that of the British Columbia Automobile Association or that the BCAA approved of the site or endorsed, authorized or had some connection with it. The Union says that the use of BCAA in the domain name is not likely to result in confusion. It notes that BCAA On Strike is different from the simple term BCAA in its domain name. Most importantly, the defendant says that the use of BCAA in the domain name simply identifies a labour relations issue with BCAA and is not a misrepresentation that it is related or connected to the plaintiff, or the plaintiff’s site, as required for the tort of passing-off.

[67] The Union says that the test is whether a reasonably prudent user would be confused that the site was linked or endorsed by BCAA. While the defendant is prepared to acknowledge that, particularly in commercial cases, the use of similar meta tags might be an element of the tort of passing-off, it says that there is no passing-off here. The Union points out, correctly, that: BCAA is not only used by the plaintiff but is an acronym used by other organizations sharing the same initials, such as the British Columbia Archery Association; that the domain name and meta tags provide no hindrance to people trying to access the BCAA site by guessing; and, that the Union meta tags do not impede people from finding the BCAA website easily. The defendant says that, unlike in many commercial passing-off cases, here the Union has a legitimate reason to refer to the term BCAA.

 Discussion of Passing-off Cases dealing with Domain Names and Meta tags

[68] Although the concept of passing-off was developed long ago, the suggestion of passing-off by way of domain names or meta tags is obviously of recent origin. In order to consider this issue in its full context I will discuss cases I have been referred to that were decided in Canada, the United Kingdom and the United States dealing with domain names and meta tags.

[69] I am mindful that the American authorities are not binding but I think they are of some guidance to me in considering the elements of the tort of passing-off in the internet context.

[70] I will then consider whether the fact that the current website is used not for commercial purposes, but rather in connection with a labour relations dispute, has bearing on the question of whether there is a passing-off. I will also then consider the cases dealing with free speech or commercial criticism and their impact on the principles that I should apply in this case.

[71] In British Telecom plc. v. One in a Million Ltd., [1998] 4 All E.R. 476, the English Court of Appeal held that the registration of a distinctive internet domain name could amount to passing-off. There the appellants were dealers in internet domain names. The respondents objected to the registration of domain names comprised of well-known and trade-marked names.

[72] An injunction application was brought in five actions. The court held that some names, such as Marks & Spencer, clearly represented to others that the registrant of the domain name was connected or in some way associated with the registered name and others, like Virgin or Sainsbury, could be used in ways that were not inherently confusing or deceptive. However, the court concluded that the appellants had registered the names without any distinguishing words for the purpose of capitalizing on the goodwill attached to the names:

  [at p. 497]

[73] If someone uses a person’s trade-mark as the domain name, such as Marks & Spencers.com or McDonalds.com, without any other words or letters, that is likely to confuse members of the public who type in the domain name looking for the website of Marks & Spencers or McDonalds and then come to something else. They will think the website has some connection with the site they were seeking.

[74] The case at bar does not involve the use of a trade-mark alone in the domain name, rather it deals with a website that contains the name and trade-mark BCAA as part of a more complete description, such as in bcaabacktowork.com.

[75] One interesting case is Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999). Brookfield Communications sought an injunction against West Coast Entertainment for its use of the domain name Moviebuff.com. West Coast had registered that domain name on February 6, 1996, and claimed to have used the phrase "Movie Buff" to promote goods and services available at its video stores since 1988.

[76] In 1998 Brookfield was issued a federal trade-mark and service mark registration of "MovieBuff" for use in association with services and software for professionals in the entertainment industry and had obtained California trade-mark registration for that mark relating to computer software in 1994. When Brookfield discovered in October 1998 that West Coast intended to launch a searchable database similar to the software produced by Brookfield on the moviebuff.com website, it objected.

[77] The court concluded that Brookfield was entitled to trade-mark protection for the "MovieBuff" trade-mark. The second question was whether the West Coast "moviebuff.com" website would cause the public to associate the source or sponsorship of the site to Brookfield. The court considered a number of factors including: similarity of conflicting designations; relatedness or proximity of the two companies’ services or products; strength of the Brookfield mark; marketing channels used; degree of care likely to be exercised by purchasers in selecting goods; West Coast’s intention in selecting its mark; evidence of actual confusion and the likelihood of expansion in product lines.

[78] Concerning intent in the selection of the mark, the court said:

  [at page 1059]

[79] Notwithstanding that West Coast did not apparently intend to deceive customers as to the source of its website, an assessment of the described factors supported the conclusion that West Coast’s use of "moviebuff.com" website would cause such confusion and they were prohibited from using this domain name.

[80] The court also considered the use of the phrase "moviebuff" in its HTML code or meta tags. The court distinguished between the use of domain names and meta tags and concluded that the latter was less likely to cause the traditional form of confusion.

  [at page 1062]

[81] According to this American case, the use of meta tags containing the trade-mark phrase could cause another type of injury to a trade-mark holder: initial interest confusion. This type of confusion would cause consumers initially interested in a plaintiff’s website to use a defendant’s website instead. As a result West Coast was prohibited from including any term confusingly similar with Brookfield’s mark in its meta tags. However, it was permitted to use the words "Movie Buff" because they were sufficiently descriptive of a motion picture enthusiast and did not provoke confusion with Brookfield’s products. They could only use the phrase "MovieBuff" to refer directly to their competitors’ products.

[82] Subsequently, another court on particular facts declined to apply this concept of initial interest confusion in the context of the internet: BigStar Entertainment, Inc. v. Next Big Star, Inc., 105 F.Supp.2d 185 (S.D.N.Y 2000). In this decision of the United States District Court for the Southern District of New York, BigStar Entertainment Inc. sought an injunction to restrain Next Big Star, Inc. from using a name that the plaintiff contended infringed on BigStar’s prior trade-mark rights. For two years BigStar’s business was the sale of videos and free information about the film industry. On the other hand, Next Big Star was launched to conduct an entertainment talent search. The court held that the plaintiff had not met the burden of proving it was entitled to a preliminary injunction. It considered the plaintiff’s argument that there was the likelihood of initial interest confusion when an initially interested consumer searched for the plaintiff’s BigStar.com website using a search engine for assistance and was drawn instead to the defendant’s www.nextbigstar.com site. The court distinguished Brookfield:

  [at page 209-210]

[83] For those reasons, including that there was no intentional use of the plaintiff’s marks in the defendant’s meta tags and no evidence of bad faith efforts by the defendant to divert patronage by trading on any name, goodwill or reputation the plaintiff may have established, the application was dismissed.

[84] In Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), affd. without opinion, 159 F.3d 1351 (3d Cir. N.J. 1998), the United States District Court granted a preliminary injunction when the owner of the common law service mark "Jews for Jesus" sought a preliminary injunction to enjoin the defendant from using the internet domain names "Jews for Jesus.org" and "Jews for Jesus.com".

[85] The court held that as the domain name used by the defendant was nearly identical to the mark of the plaintiff, consumers were likely to be confused as to the source of the domain name. The court considered factors similar to those discussed in Brookfield and said:

  [at page 301]

[86] The court concluded that both types of confusion, source confusion and initial interest confusion, were probable given the defendant’s use of the plaintiff’s organization’s name in its domain name. The court held that it was a "bogus Jews for Jesus" site intended through deceit to intercept the audience seeking the plaintiff’s site. Although the court concluded that the defendant should be enjoined from using the plaintiff’s marks in a deceptive and confusing manner, it was free to publish critical comments about the plaintiff organization on a website as long as the mark was not used in a confusing or deceptive manner.

[87] In Planned Parenthood Federation of America v. Bucci, 1997 U.S. Dist. LEXIS 3338; 42 U.S.P.Q.2D (BNA) 1430 (S.D.N.Y. 1997), affd. 1998 U.S. App. LEXIS 22179 (2d Cir. N.Y. 1998), the plaintiff Planned Parenthood Federation of America owned a registered trade-mark of that name. It sought a preliminary injunction against the defendant’s use of the domain name "Planned Parenthood.com". The defendant posted anti-abortion literature on that site and acknowledged that it selected the plaintiff’s mark as a domain name specifically to attract "pro-abortion" internet users because of their misapprehension of the site source.

[88] The court considered that all relevant factors combined to support a finding that the use of the trade-mark in the domain name was likely to cause confusion as to the source of material of the website and rejected the defendant’s argument that the use of the trade-mark was part of a communicative message protected by free speech:

  The court granted the injunction.

[89] In Edgar Online Inc. v. Dan Parisi, Civil No. 99-2288 (BNA) (D.N.J. 1999), the plaintiff owned the trade-mark Edgar Online and operated a website under the registered domain name "Edgar - Online.com". The defendant subsequently registered a website under the domain name "EdgarOnline.com". The court held that the use of the plaintiff’s trade-mark in a domain name constituted false designation of origin. The court also found that by using a domain name that was virtually identical to the plaintiff’s trade name, the defendant was impeding some internet users from reaching the plaintiff’s website, thereby interfering with the plaintiff’s distribution of its own services. The court concluded there was a great likelihood of confusion for consumers reaching the defendant’s website when searching for the plaintiff’s website. The domain names were virtually identical, the defendant services were marketed through the same channels as the plaintiff’s, they both targeted the same audience and their respective products were likely closely associated in the minds of the public due to their similar functions. As a result the court granted a preliminary injunction.

[90] Another case with virtually identical domain names was Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 33 F.Supp.2d 488 (E.D. Va. 1999). The plaintiff was the Washington Speakers Bureau, a prominent lecture agency that had used an extension to advertise its names as a trade-mark for many years. The defendant was a business involved in assisting associations, companies, and colleges to stage meetings using outside speakers that included various Washington and political personalities. The defendant registered multiple domain names, some of which incorporated the word "speakers" with geographical locations. The plaintiff objected to the use of the domain name "washingtonspeakers.com".

[91] The court examined the likelihood of confusion between Washington Speakers Bureau and WashingtonSpeakers.com. The court held that while the domain name did not precisely spell out the name of the organization, a trade-mark need not be identical to infringe upon another and all that was necessary was sufficient similarity between the marks to confuse consumers. The court found that "Washington Speakers" was only a descriptive term likely to be used to describe the services offered by Washington lecture agencies that represent political speakers, and as a result the similarity between the marks was unlikely to cause confusion in the relevant market. However, the nature of internet domain names made it likely that internet users looking for WSB would likely find the defendant’s website, which advertised similar services, and become confused. In addition, the court concluded that the defendant’s choice of domain names led to the probable conclusion that there was bad faith intent to approximate the name of a competitor and attract internet business that might otherwise go to that competitor. As a result, the defendant’s use of the domain name was prohibited on the basis that it was likely to cause confusion.

[92] In Network Network v. CBS Inc., 2000 U.S. District LEXIS 4751; 54 U.S.P.Q.2D (BNA) 1150 (C.D. Cal. 2000), the plaintiff, the Network Network, sought a declaratory judgment that its use of the internet domain name "TNN.com" was appropriate. The defendant CBS had acquired The Nashville Network, the owner of the trade-mark TNN, which was the short name for that network. Nashville contended that Network’s choice of domain name caused substantial confusion and pointed to e-mail sent to Network asking for information on Nashville’s programming. Nashville’s claim was for passing-off and unfair competition under a statutory prohibition. The plaintiff was successful in seeking the declaration. The court distinguished Brookfield and said that Network had used exactly the same mark as the one it registered as a domain name "TNN" to note its goods as far back as 1989 and that much of the confusion in Brookfield related to the similarity of the products offered by the parties. In the present case the goods and services offered were wholly distinct. The court found that the dissimilarity of goods and services resolved the initial interest confusion.

[93] Let me turn to some cases where the defendant has used another’s trade-marks in the meta tags of the allegedly offending website.

[94] In Brookfield, supra, the court held that the use of the domain name "MovieBuff.com" in meta tags would result in what was described as initial interest confusion.

[95] In Niton Corporation v. Radiation Monitoring Devices, Inc., 27 F.Supp.2d 102 (D. Mass. 1998), Niton Corporation was in competition with the defendant, Radiation Monitoring Devices, in the business of detecting lead in paint. The plaintiff discovered that the internet source code or "meta" descriptions of the defendant’s websites were identical to those of the plaintiff’s website. The meta tag description of the defendant’s website was "the home page of Niton Corporation, makers of the finest lead, radon and multi-element detectors." The word radon was relevant to products Niton sold, but not to products sold or marketed by Radiation Monitoring Devices.

[96] The court found at p. 105 that Niton:

  A preliminary injunction was granted.

[97] Several cases involving Playboy Enterprises were referred to me. Most appear to be unopposed injunction applications. In Playboy Enterprises, Inc. v. AsiaFocus International, Inc., 1998 U.S. Dist. LEXIS 10359 (E.D. Va. 1998), for example, the defendant used the plaintiff’s registered trademarks "playmate" and "playboy" within their domain names "asian-playmates.com" and "playmates-asian.com". Those trademarks were used in the defendant’s electronic mail address and on almost every page of the website. The trademarks were also used to promote the sale of merchandise and were embedded in the meta tags of the website. The Court awarded default judgment and damages against the defendants for these intentional and deceptive tactics.

[98] Playboy Enterprises, Inc. v. Welles, 7 F.Supp.2d 1098 (S.D. Cal. 1998), affd. without opinion, 162 F.3d 1169 (9th Cir. Cal. 1998), was somewhat different. Playboy Enterprises, Inc. was the owner of registered trade-marks for the terms Playboy, Playmate, Playmate of the Month and Playmate of the Year. Playboy Enterprises Inc. did not have a trade-mark registration for PMOY but argued it was a well-known abbreviation for Playmate of the Year. The defendant was a former "Playboy Playmate" who was "Playmate of the Month" in 1980 and "Playmate of the Year" in 1981. In 1997 the defendant started a website at the domain name "www.TerryWelles.com" featuring a heading stating "Terry Welles - Playboy Playmate of the Year 1981". Each of the pages of the website featured "PMOY 1981" as a repeating watermark in the background. On 11 of the 15 webpages, a disclaimer appeared at the bottom of the pages indicating that the site "is neither endorsed, nor sponsored by, nor affiliated with Playboy Enterprises, Inc." The words Playboy and Playmate were used in the meta tags of this website.

[99] The fundamental difference in this case was the descriptive nature of the trade-marks. The court said that the trade-marks not only related to the Playboy magazine, but were also titles given to the models. The court accepted the defendant’s argument that her use of Playboy Enterprises Inc.’s trade-marks constituted a "fair use". The defendant was only using the trade-marked terms on her website to identify herself, and did nothing to confuse users of her website that her site was a Playboy-related site. The use of the terms in the meta tags were permissible both to identify Ms. Welles and for any legitimate editorial uses of the term Playboy used in the text of her website. The court concluded that apart from the "fair use defence", there was no substantial likelihood that users would be confused into assuming that the defendant’s website was endorsed or sanctioned in any way by Playboy Enterprises Inc.

[100] Accordingly, in Brookfield and Asia Focus the court prohibited the defendant from using the plaintiff’s trade-marks in meta tags because to allow such use would unfairly divert business away from the plaintiff. However, in Welles the defendant was only using the trade-marked terms on her website to identify herself and did nothing to confuse users of her website that her site was a Playboy-related site. In Niton, the defendant was impermissibly using the exact meta tags thereby attracting consumers to a competing website.

[101] Another American case suggests that the use of a plaintiff’s trade-marks in the defendant’s meta tags will not and should not always cause confusion for the purposes of passing-off.

[102] In Bally Total Fitness Holding Corp. v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998), a decision of the District Court in California, the plaintiff, Bally Total Fitness Holding Corp., brought an action against the defendant for trade-mark infringement, unfair competition and dilution of its registered trade-marks and service marks in the terms "Bally", "Bally’s Total Fitness" and "Bally Total Fitness". The defendant had placed his websites under the domain name "www.compupix.com" and devoted one sub domain site to complaints about Bally’s health club business. This particular site was called the "Bally Sucks" site. While the domain name did not contain the Bally name, the meta tag code did contain references to Bally such that the users of search engines would be referred to the defendant’s site as well as the Bally official site.

[103] To examine the likelihood of potential confusion the court also examined a series of factors:

[104] The court found that these factors apply to related goods but that the plaintiff and defendant’s goods were not related. The court said at page 1163:

[105] The court held that although Bally was entitled to protection of its strong trade-marks, the usage of the trade-mark word was considerably different when considered with the addition of the word "sucks". Additionally, the court found the websites had fundamentally different purposes; one was a commercial advertisement, while the other was a consumer commentary. These factors led the court to conclude that a "reasonably prudent user" would not mistake the defendant’s website for Bally’s official site. In fact the court noted that even if the defendant had used the domain name "BallySucks.com", a reasonably prudent user would not be confused as to the origin of the website.

[106] The court also concluded that it was necessary to use the Bally name in the meta tags of the defendant website to enable internet users to access this type of consumer commentary. In order to make such commentary, the defendant had to make direct references to Bally, and to prevent the use of the name Bally in the meta tags "would effectively isolate [it] from all but the most savvy of internet users." As a result, the court concluded that there was no likelihood of confusion between the defendant’s website and the plaintiff’s registered trade-marks.

[107] Before applying the principles of the law of passing-off that I have described at the beginning of this section to the question of the domain names and meta tags on this particular Union site, I think it is also important to consider other principles that may apply when considering an allegation of passing-off that does not involve commercial competition. As also noted in Bally, none of the cases that the plaintiff refers to really involve consumer commentary. The case at bar involves a labour dispute, not a commercially competitive situation.

[108] The defendant argues that freedom of expression is an important fundamental principle of our democratic society and that the common law and statute law should be interpreted in a manner consistent with the Charter. The defendant says that the Union website was, in effect, a leafletting campaign conducted at the plaintiff’s place of business during the strike. It says that the use of the domain name and the meta tags was the only realistic method by which the Union could put out its message.

[109] The plaintiff suggests that the right of freedom of expression, although no doubt existing, is limited in that it cannot provide justification for appropriating or infringing the plaintiff’s intellectual property rights.

[110] In U.F.C.W., Local 1518 v. KMart Canada Ltd. (1999), 176 D.L.R. (4th) 607 (S.C.C.), the company sought an injunction to prevent secondary picketing. The question was whether the definition of picketing in the statute was constitutional.

[111] The employer operated several British Columbia stores, and Local 1518 was certified to represent employers at Campbell River and Port Alberni stores but not at the remaining stores. Local 1518 organized a leafletting campaign and distributed leaflets to customers entering the stores at other stores, the secondary sites. The employer obtained an injunction to restrain leafletting activity pursuant to the Industrial Relations Act, R.S.B.C. 1979, c.212, replaced by the Labour Relations Code, S.B.C. 1992, c.82, which continued in substance to place the same limitations on secondary picketing. The court held that the definition of picketing, which would encompass leafletting activity, was overly broad and could not be justified under s. 1 of the Charter. Cory J. said at page 622:

[112] This case involves the internet. The Union argues that the use of the domain names and meta tags are the only method by which the Union can position itself to put its message before people visiting the employer’s website.

[113] The plaintiff says that publishing an internet website is a far cry from leafletting. It says that a leafletting campaign is different from giving a Union a general right to intercept or divert the public, particularly by surreptitious or deceptive means. By this it is referring to the use of meta tags to intercept people who are actually looking for a different site. The plaintiff says that preventing the Union from using the domain name and meta tags does not banish the Union from the effective use of the internet, because it can properly identify itself, use proper domain names and meta tags, and can e-mail anybody on the internet. The plaintiff says it would be bad policy to endorse a misrepresentation of the nature and identity of a website to allow it to become more popular and pervasive. Finally the plaintiff argues that the KMart decision speaks of leafletting activity being properly conducted, "in the absence of independently tortious activity." The plaintiff argues that there is tortious activity or unlawful means employed by the defendant through the form of its message. The plaintiff contends that the right of the Union members to picket is limited to lawful conduct.

[114] The plaintiff referred me to a number of decisions as support for its proposition that freedom of expression does not provide justification for appropriating the plaintiff’s intellectual property rights: Canadian Tire Corp. v. Retail Clerks Union, Local 1518 (1985), 7 C.P.R. (3d) 415 (F.C.T.D.); Source Perrier (Société anonyme) v. Fira-Less Marketing Co. Limited, [1983] 2 F.C. 18 (F.C.T.D.); R. v. James Lorimer & Co., [1984] 1 F.C. 1065 at 1073 (F.C.C.A.) and Rôtisseries St-Hubert Ltee. v. Le Syndicat des Travailleurs(euses) de la Rôtisserie St-Hubert de Drummondville (C.S.N.) (1986), 17 C.P.R. (3d) 461 (Que. S.C.).

[115] The plaintiff also says that disclaimers in the Union’s website are of no significance. The web user arrives at the Union webpage, the plaintiff says, thinking it is a BCAA site as a result of the use by the Union in its domain name and misrepresentation in the meta tags that it is a BCAA site. The plaintiff relies on Planned Parenthood, supra, where the disclaimer was not sufficient to dispel the confusion induced by the home page address and the domain name. The plaintiff also relies on Source Perrier, supra, in whichthe fact that the "product clearly indicates that it is marketed by the Defendant and contains a disclaimer" was not enough to remove the confusion that existed due to the similarity between the products.

[116] What of the disclaimer of the case at bar? The defendant argues that an effective disclaimer can dispel any likelihood of a false impression of affiliation. The current Union site, (before the strike ended) said, "Greetings, OPEUI is on strike against the BCAA." The second Union site was entitled www.picketline.com in visible font and had the phrase, "Greetings, bcaa is on strike." The first Union site contained a similar phrase.

[117] What is the appropriate standard to measure whether there is a passing-off? The defendant has referred to the "reasonably prudent internet user" as the standard for confusion. I do not think that is the test. The Supreme Court of Canada in Ciba-Geigy Canada Ltd. v. Apotex Inc. (1992), 44 C.P.R. (3d) 289, said that the standard is that of the ordinary average customer. The plaintiff refers to this passage which I think accurately sets out the test:

  [at page 301]

[118] The plaintiff says that the defendant has employed its meta tags (a reference to the initial meta tags) with the stated intent of diverting internet users away from the BCAA website and towards the Union website, with the hope that internet users will not do business with BCAA.

 Does the Current Union Website Constitute Passing-off?

[119] I reiterate that the passing-off claim in connection with the current Union site relates only to the domain names bcaaonstrike.com and bcaabacktowork.com and the use of the meta tags, which the plaintiff says describe the BCAA site and not a Union site.

[120] Has the plaintiff demonstrated that the defendant’s use of the domain names and the meta tags constitutes a passing-off? Although the plaintiff argues that the use of the domain names by the defendant constitutes a passing-off, it does not suggest that the use of the acronym BCAA in the meta tags, per se, is a passing-off, but rather depends on the context. In this context, it says that the use does amount to a passing-off.

[121] I find that the current Union website does not constitute a passing-off. I have concluded that there is no misrepresentation that the Union site is a site of the plaintiff, or a site that is endorsed by, affiliated with or connected to the plaintiff. I think there is no actionable passing-off because there is no confusion or possibility of confusion in the minds of an internet web user that the site is associated with or the property of the BC Automobile Association. The fact that the current internet site is not associated with the British Columbia Automobile Association is quickly apparent from looking at the site.

[122] There are a number of factors which, as a whole, lead me to the conclusion that there is currently no passing-off.

[123] The domain name that is used by the defendant is not identical to the plaintiff’s trade-marks. I think this is significant. The words that were added, "back to work" or "on strike", suggest that the Union site is not the plaintiff’s site or a plaintiff-sponsored or affiliated site.

[124] I am unable to find in these circumstances that the use of the word mark BCAA as part of the domain name is, in the circumstances, misleading or a passing-off. I think that this use of the word BCAA in the domain name is something to be considered given the whole of the evidence. In the case of the current Union website it is clear that it is not BCAA’s site.

[125] In terms of the defendant’s use of the domain names and the present meta tags, I think that the context in which these names and meta tags are used is of vital importance. Presently the defendant is not using a domain named identical to the plaintiff’s trade name, nor is it, as it had earlier, using identical meta tags.

[126] It is also significant that the Union website is not competing commercially with the plaintiff, but is attempting to communicate its message to the public about an ongoing labour relations campaign. I think that the use of similar meta tags or domain names is of less significance in a labour relations or consumer criticism situation, partly because there is far less likelihood that there will be confusion.

[127] The plaintiff however complains that there is no need for the defendant to use the trade-mark BCAA in its domain name and that many of the words that are still used in the defendant’s meta tags are not descriptive of the Union site but are simply a vehicle to draw people searching for the BCAA site to the Union site. The plaintiff says that the Union site could use a domain name that accurately describes the Union and can use meta tags that are simply descriptive of its organization and not the plaintiff’s.

[128] I think the plaintiff’s complaints are unrealistic. I recognize that the use of BCAA in the domain name is intentional. However, the use of BCAA in the Union domain name and the references that are currently made in the meta tags are not a misrepresentation provided they do not represent the site as that of the plaintiff or associated with the plaintiff. Here, I think that here there were legitimate reasons for the Union to use the domain names and the meta tags it presently uses. The defendant’s current use of meta tags is not a misrepresentation. I think that if a site wishes to operate as a lawful vehicle during a strike or as a consumer criticism site, it must be able to reach people who are attempting to find an employer’s or a producer’s site. Otherwise the Union’s lawful activities or the activities of consumer groups would be significantly frustrated.

[129] The language used in the current meta tags (which I note is different from the language used in the first two Union websites) would likely result in people using search engines to find B.C. Automobile Association finding the Union website high on the list of sites on the search results. While I think that the use of similar meta tags unconnected to a defendant’s business or operation might indicate deception and might be a significant factor in determining if there is a passing-off, I think that the use of these particular meta tags is not objectionable because it is a reasonable way for the Union to bring its message to people wishing to do business with the employer. The Union must be free to identify its employer and communicate about its labour dispute. The fact of a labour dispute, which is apparent from the Union website is, I think, immediately clear to any reasonable or rushed observer. It is equally clear that the site is not endorsed by or the property of the B.C. Automobile Association.

[130] I agree with the defendant’s argument that the common law should be interpreted in a manner consistent with the Charter. When a website is used for expression in a labour relations dispute, as opposed to commercial competition, there is, I think, a reasonable balance that must be struck between the legitimate protection of a party’s intellectual property and a citizen’s or a Union’s right of expression. I think that the principles in KMart require such a balance and the common law should not be interpreted in a way to unreasonably infringe a person’s freedom of expression. In connection with this claim for passing-off, that balance favours the Union.

[131] The most recent version of the site contained the disclaimer, "Greetings, OPEIU is on strike against BCAA." In National Hockey League, supra, at page 408, the Court said:

  A brief look at the site rapidly makes it clear I think that it is not BCAA-sanctioned or affiliated. The disclaimer, combined with the other elements of the current Union site, leads me to conclude that there is no reasonable possibility of confusion that there is affiliation between the Union site and the BCAA.

[132] Although actual confusion is not a required element of the tort of passing-off, it is a factor to consider in determining if there is a misrepresentation. Here, there was no evidence of any actual confusion by anyone thinking that the current Union site was the property of, or associated or connected with the BCAA.

[133] Therefore I conclude that the present Union site as a whole (including the domain names and meta tags) does not amount to passing-off.

 SECTION 22 OF THE TRADE-MARKS ACT

[134] The plaintiff alleges that the Union has from the outset of its websites and at present used its trade-marks without permission in connection with the provision of services, and that in doing so it has depreciated the value of the goodwill associated therewith and has thereby contravened section 22 of the Trade-marks Act, R.S.C 1985, c.T-13.

[135] Section 22 of the Trade-marks Act provides,

[136] The earlier Union sites used CAA and BCAA in the website design and BCAA in the domain name. Both marks were used in the earlier Union website meta tags. The Union made changes to the sites and the meta tags. The amended version of the Union website deleted the CAA logo, changed the BCAA trade-mark to lower case but otherwise the meta tags remained the same. The current version of the Union website deleted reference to the trade-marks BCAA and CAA in the meta tags, eliminated the use of the trade-mark BCAA in the Union website, but the current version still bears domain names that contain BCAA. The URL of the Union website is "www.bcaaonstrike.com" and at some point after mid February 2000 the Union website added the internet address "www.bcaabacktowork.com".

[137] The plaintiff says it has goodwill attaching to its trade-marks and certification marks, namely the CAA and BCAA marks, and it argues that the goodwill attached to those marks has been depreciated by reason of this use by the Union.

[138] In order to succeed the plaintiff must first establish, as it has, that it has a validly registered trade-mark. It is not disputed that BCAA and CAA and the CAA logo are validly registered trade-marks.

[139] Second, the plaintiff must demonstrate that the defendant has used the registered trade-mark as "use" is defined in the Trade-marks Act. The plaintiff does not suggest that the trade-marks have been used in connection with goods but relies only on the use of the trade-marks in association with services. Third, the plaintiff must establish that such use is likely to have the effect of depreciating the goodwill attached to the registered trade-mark. Both of these factors are in issue.

[140] The defendant’s argument has properly identified three essential issues that must be considered in determining whether the plaintiff has established the requisite elements under s. 22 of the Trade-marks Act. First, is there a requirement for a commercial element to the allegedly infringing conduct? Second, are the activities at the Union websites services to which s. 22 of the Trade-marks Act applies? Third, has the defendant shown a depreciation of goodwill?

[141] If the plaintiff fails on any of these points the claim under s. 22 must fail.

[142] The leading authority on s. 22 is Clairol International Corp. v. Thomas Supply & Equipment Co. (1968), 55 C.P.R. 176 (Ex.Ct.). That was a commercial case. The parties were competitors in hair colouring preparations. The defendant marketed its wares under the name Revlon and the plaintiff used the trade-mark Ms. Clairol. The defendant’s packages and brochures included colour comparison charts in which both the plaintiff’s trade-mark Ms. Clairol and another trade-mark appeared. The court held that the defendant’s use of a trade-mark on the packages was contrary to s. 22 of the Trade-marks Act, but its use on the defendant’s brochure was not.

[143] The court described the general effect of s. 22,

Thurlow J. continued at p. 201,

[144] As MacKenzie J. observed in Future Shop Ltd. v. A. & B. Sound Ltd. (1994), 55 C.P.R. (3d) 182 (B.C.S.C.), s. 22 is a "unique provision capable of substantially divergent interpretation" which has not definitively been interpreted by an appellate court in this country.

[145] Section 4(2) of the Trade-marks Act is the section applicable to the case at bar as it deals with services. I have reproduced all of s. 4(1), which deals with wares, as well:

[146] The plaintiff argues that the Trade-marks Act does not distinguish between primary and ancillary services and that the nature of the services rendered in association with a trade-mark need not be commercial for the ss. 22(1) and 4(2) to apply.

[147] The plaintiff says that I am not bound by and should not follow the decided cases on the question of the meaning of the term "services" and what constitutes performance or advertisement of services. Mr. Dunlop argues that the term services ought to be given a broad interpretation such that "services" means something that benefits others and need not be services that have a commercial element.

[148] The defendant says that the trade-marks on the websites have not been used in connection with the performance or advertising of services as that term is used in the statute. The defendant argues that the statute implicitly requires that the services, in association with which the trade-mark is used, must be commercial.

[149] I will deal first with the contention of the defendant that s. 22 requires a commercial element to the allegedly infringing conduct.

[150] In D. Vaver, Intellectual Property Law (Concord: Irwin Law, 1997), the author said this concerning s. 22 of the Trade-marks Act:

 
[emphasis added]

  [at page 218]

[151] A case that is applicable, but which the plaintiff says is incorrectly decided, is Cie Générale des Établissements Michelin-Michelin & Cie v. C.A.W. - Canada (1996), 71 C.P.R. (3d) 348 (F.C.T.D.). It concerned a claim by the plaintiff for trade-mark infringement under both sections 20 and 22 of the Trade-marks Act. The plaintiff had the registered logo trade-mark of a marshmallow-like figure called Bibendum. The defendant Union, organizing a campaign to become bargaining agents, distributed leaflets to the workers outside the plant. The leaflet contained a rendition of Bibendum in the act of stomping on the head of a worker standing below. The court applied Clairol and said at p. 367-368:

[152] The plaintiff argues that the reference in Michelin to the need for a commercial element or connotation is unnecessary, not apparent in the statute and that the requirement in Clairol (a commercial competition case) must be restricted to the particular commercial circumstances of that case. The defendant says that the plaintiff has shown no authority that non-commercial activity might support a claim for depreciation of goodwill. The plaintiff refers to Rôtisseries St-Hubert, supra, which is a brief decision on this point and does not assist the plaintiff. The plaintiff argues that to give s. 22 such a narrow interpretation would prevent a union itself, which does not usually engage in commercial trading, from relying on the Trade-marks Act to protect its registered rights.

[153] I disagree with the plaintiff. I think that the statute requires that the offending use be a use in association with wares and services and that contemplates an element of commercial use as identified in Clairol and Michelin. I do not think that those decisions are incorrectly decided. The apparent non-commercial status of the Union’s website leads me to conclude that that the trade-marks are not used in association with wares or services and takes the defendant’s use of the plaintiff’s trade-marks outside the scope of s. 22 of the Act. I think that the Union’s argument, that the interpretation that the plaintiff seeks would place an unwarranted restriction on free speech, has merit.

[154] Did the defendant use the trade-mark in association with services? The plaintiff submits that the following are services offered through the Union website, including:

[155] The things that the BCAA refers to as services are not sold nor advertised by the Union. Essentially, the Union is seeking to obtain the assistance of the people using the website to accomplish the objectives of the Union and its members. The proxy service, the postcard campaign and the bulletin board are not services sold, or for that matter even provided to the public. The defendant’s argument is that these activities benefit the Union, not the public.

[156] The defendant says that BCAA is trying to characterize as services things that are better described as activities or information on the Union websites. If there was a commercial element to the defendant’s activities, in the sense that it was charging a fee or seeking a profit, it would be much easier to conclude that what was offered or provided at the defendant’s website was a service as contemplated by s. 4(2). Given the absence of an apparent commercial aspect to the defendant’s website activities, which I think is readily apparent from the list I have just set out, I have difficulty concluding that the plaintiff has shown that the defendant is using trade-marks in association with "services".

[157] I think that the defendant is correct that if the provision of information of this sort to the public amounts to a service under the Trade-marks Act, the results in Michelin and in Clairol would probably have been different. In Michelin, it would have been held that the section applies to the distribution of leaflets and in Clairol the brochure would have violated s. 22.

[158] I think that the non-commercial provision of information alone is not a service as contemplated by s. 4 of the Act. Absent the commercial element, I am unable to see that the activities at the Union sites could be described as services as contemplated by the section.

[159] The third question is whether there has been a depreciation of goodwill as required by s. 22 of the Trade-marks Act. The plaintiff’s argument I think fails on this ground as well.

[160] The plaintiff says that a proprietor may establish a likelihood of depreciation of goodwill attaching to a mark by showing that a third party’s use of a registered trade-mark is likely to render the mark less extensive and thus less advantageous by otherwise diluting the trade-mark’s effectiveness as a trade-mark.

[161] In terms of the domain names used by the defendant, the plaintiff argues that there has been use that depreciates the goodwill attached to the trade name BCAA. The plaintiff contends that the use blurs the mark now that another entity offers services under that mark over the same distribution channel. BCAA argues that the mark is tarnished because it is now linked to services other than those the plaintiff controls and is used for the stated intent of reducing the esteem and reputation connected and associated with the trade-mark. The plaintiff points to the fact that the original version of the Union website prominently employed the CAA logo, the trade-mark BCAA and the branding elements of the Union website design, and although the amended version removed the CAA logo, it maintained prominent use of the trade-mark BCAA.

[162] The plaintiff says that the defendant has acknowledged that its fundamental purpose is to establish the website to support the legal strike by reducing BCAA’s business. Although such protest is not illegal, the plaintiff says that to employ the plaintiff’s property as a weapon in the Union’s cause is unlawful. This depreciation, it argues, occurs in connection with the use of trade-marks in the Union domain names, the website meta tags and the earlier Union website designs.

[163] In Future Shop, supra, the court dealt with an application for an injunction and after commenting on Clairol made the following comments concerning the interpretation of s. 22 of the Trade-marks Act:

  [at page 187]

[164] Does the defendant’s use of the plaintiff’s trade-marks depreciate the value of the goodwill attaching to those marks as contemplated by the section? The Union is obviously not depreciating the goodwill in the plaintiff’s trade-marks as was done in Clairol. The Union is not attempting to convince the public that any positive feeling they may have with respect to the British Columbia Automobile Association should apply to it. They are attempting to persuade members of the public not to do business with BCAA. If they are successful can it be characterized, as the plaintiff suggests, as appropriating the goodwill attached with the BCAA trade-mark to make it more convenient to attack the automobile association?

[165] The Union puts it this way. It is using the BCAA marks merely to draw the existence of the subject matter of the Union website to the attention of people looking for information about BCAA on the internet. They say that any depreciation of goodwill in the BCAA marks results not from the use of the BCAA marks by the Union, but from the support of an informed public for BCAA’s striking office workers.

[166] In Michelin, the court, in passing, touched on this issue. It said:

  [at page 371-372]

[167] If a trade-mark appears on a picket sign or on the website, does it depreciate the goodwill associated with that trade-mark as that term is used in this section? I do not think so. Any depreciation of goodwill was not brought about by the manner of the use of the trade-mark. Rather it might be said to occur if the Union is successful in its arguments in support of its members. The Union is entitled to express its position and speak freely provided it does not violate s. 22 of the Trade-marks Act. I think that to accept the plaintiff’s argument, that the reference to an employer’s trade-mark to identify a Union site depreciates goodwill associated with that trade-mark, would be a result that goes far beyond what Parliament intended by s. 22.

[168] In summary, the plaintiff has not demonstrated that there has been depreciation of goodwill attached to the trade-marks, or that the defendant used the plaintiff’s trade-marks in association with services. Accordingly I find that the defendant’s use of the trade-marks in the websites and domain names does not constitute a breach of s. 22 of the Trade-marks Act.

 Copyright Infringement

[169] The plaintiff seeks a declaration, damages and an injunction for breach of copyright in connection with the Union’s first two websites. No copyright claim is advanced with respect to the current Union site.

[170] Copyright is purely a statutory right: Fox, Canadian Law of Copyright and Industrial Designs, 3rd ed. (Scarborough: Carswell, 2000). Section 5 of the Copyright Act, R.S.C. 1985, c.C-42, allows for copyright in artistic works. "Artistic work" is defined by the statute to include:

[171] In order to be entitled to copyright protection, a work must be original. This concern relates only to the expression of the work, not the idea expressed in the work. The only requirement is that the work must originate from the author, and not be copied. This point was made by Peterson J. in University of London Press, Ltd. v. University Tutorial Press, Ltd., [1916] 2 Ch. 601:

  [at page 608-609]

[172] Section 3 of the Act entitles the owner of copyright protection to the sole right to reproduce their work. The owner of copyright also possesses the sole right to authorize any such reproduction. Section 27 of the Act provides that:

It is an infringement of copyright for any person to do, without the consent of the owner of the copyright, anything that by this Act only the owner of the copyright has the right to do.

[173] In order to establish a claim for copyright infringement the plaintiff must establish that the work in which the plaintiff claims copyright is original, that there has been copying from that work and that if there was copying, a substantial portion of the work has been reproduced: IBCOS Computers Ltd. v. Barclays Mercantile Highland Finance Ltd., [1994] F.S.R. 275 (Ch.D.).

[174] The defendant denies that there has been a breach of copyright. The defendant agrees that there were similarities between the first Union website and, to a lesser extent, the second and that the similarities were intentional. However, the defendant says that to determine whether a substantial part of a protected work based on commonplace materials has been copied, the offending work must be virtually identical. The defendant says that to determine in these circumstances if there is copying of a substantial portion, the ideas and expressions which are in the public domain must be filtered from a protected work to leave a core of protected expression, which may then be compared to the allegedly infringing material.

[175] The plaintiff says that this is not the test in Canada. The plaintiff says that this abstraction-filtration-comparison test has been rejected in England and is not generally accepted in Canada, and certainly not in the context of an artistic work. It has been applied in this province to computer software programs: Prism Hospital Software Inc. v. Hospital Medical Records Institute (1994), 57 C.P.R. (3d) 129 (B.C.S.C.).

[176] The test, the plaintiff says, is not whether there are differences between the plaintiff’s and defendant’s work, but whether the defendant has reproduced a substantial part of the plaintiff’s original expression.

[177] The defendant argues that it is entitled to make fair use of some of the visual elements of the BCAA website pursuant to s. 29.1 of the Copyright Act. The plaintiff says that the section does not apply as the use of the website design was not for the purposes contemplated by the section, including criticism of the design. The plaintiff also says that the defendant failed to mention the source and author of the BCAA website design in its website.

[178] Let me turn to a discussion of the applicable law.

[179] In Slumber-Magic Adjustable Bed Co. Ltd. v. Sleep-King Adjustable Bed Co. Ltd. (1984), 3 C.P.R. (3d) 81 (B.C.S.C.), McLachlin J. (as she then was) in describing whether a plaintiff had copyright in a brochure said:

  [p. 84-86]

[180] In British Columbia Jockey Club v. Standen (1983), 73 C.P.R. (2d) 164 (B.C.S.C.), affd. (1985) 8 C.P.R. (3d) 283 (B.C.C.A.), Legg J. indicated that substantial did not mean identical:

  [p. 173]

  Later Legg J. quoted from Lord Reid in Ladbroke (Football), Ltd. v. William Hill (Football), Ltd., [1964] 1 All E.R. 465, where Lord Reid said:

 
(emphasis added)

  [p. 469]

[181] It was not seriously disputed that the graphic design of the 1997 BCAA website was an "artistic work" of sufficient originality to entitle to plaintiff to copyright protection for its first website. I find that it does. I will discuss the evidence concerning that shortly. The more serious questions are whether the plaintiff has demonstrated that there has been the degree of copying necessary to amount to a breach of copyright and whether s. 29 of the Copyright Act provides a defence to the defendant for its production of the first and second Union sites.

[182] First let me discuss the development of the 1997 BCAA website. The history appears in Steven Fitzgerald’s affidavit. Mr. Fitzgerald is an engineer who works at Habanero Studios with his partner Neil Jensen on website design. The evidence indicates that the 1997 BCAA website was the product of a website development project that ran over several months involving a number of workshops between the designer Habanero Studios and BCAA. The BCAA website design was completed in March 1997 and it was first published on the internet in April 1997. The original version of the plaintiff’s webpage was entitled BCAA On-Ramp with a blue margin and the trade-mark BCAA appeared in large red letters. The website provided access to information or services dealing with travel, automotive, insurance, membership benefits and customer service.

[183] To succeed in a breach of copyright action the plaintiff must demonstrate that the defendant has reproduced a substantial part of the plaintiff’s work or elements thereof. There must be similarity and a causal connection. It is no defence if the defendant added work to a copied work: C.P. Koch Ltd. v Continental Steel Ltd. (1984), 82 C.P.R. (2d) 156 (B.C.S.C.).

[184] I agree with the plaintiff that the essential design elements of the 1997 BCAA website can be seen by simply viewing any of the webpages from that design.

[185] The initial step is to determine if there has been substantial copying and whether in the case of either the first or the second Union website that element of the claim of breach of copyright has been established.

[186] As noted in Ladbroke, supra, the issue of whether or not there has been substantial copying is a question of quality, not so much a matter of quantity. The defendant urges on me that where the similarities between two visual displays consist only of unprotectable elements that the appropriate standard is one of virtual identity: see Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994). I disagree. I think that the test is as stated by McLachlin J. (as she then was) in Slumber Magic, supra. It is the overall arrangement of the components that is important to determining whether the plaintiff has copyright in an original work. Substantial copying cannot be defined precisely. The question is whether on a qualitative, not simply a quantitative basis, there has been substantial copying. It is said to be a matter of fact and degree. The court must exclude portions of work that are not subject to copyright, such as ideas or information. I recognize that the characteristics of websites to some degree must be dictated by function. Additionally, the constraints imposed by technology or the nature of the product may not indicate copying. However, it should be recognized that the overall arrangement of commonplace elements such as colours, shapes and designs can obviously result in an original artistic work for which the author is entitled to copyright protection. Such a work cannot be copied without the author’s consent.

[187] Did the defendant copy a substantial part of the 1997 BCAA website design?

[188] Both parties filed expert evidence on the question of whether there were substantial similarities between the plaintiff’s 1997 and the defendant’s early websites and whether the various aspects of the plaintiff’s and the Union website design were commonly used elements.

[189] I think that the plaintiff’s copyright as an artistic work in the design of its 1997 website includes the look, layout and how the webpage appears to operate.

[190] The initial Union web page looks very similar to the plaintiff’s 1997 website that existed at the time. Each has a white body, a black header and a blue margin on the left. The letters BCAA are in red under the logo CAA, which is upside down on the Union webpage. Under the letters BCAA appear the words "on-ramp" on the plaintiff’s 1997 site and in the same area under those letters on the Union site appears the word "off-ramp".

[191] The possible similarities between the plaintiff’s and the Union website extend to several features that were discussed by the two experts: Steven Fitzgerald for the plaintiff and Ben Ansell for the defendant.

[192] In terms of colours the plaintiff points out that there is a blue "side bar", white "body well", black "menu bar" and a red font for the trade-mark BCAA. The plaintiff points out that the HTML code for the colours is identical except for the colour blue in the highlighted body text, but the defendant points out that both programs were created from the same commercial program and the white, black and red colours were simply default options. The revised Union website did not alter this colour scheme.

[193] The plaintiff asserts that the logos and imagery were vital design elements of the 1997 design, including the use of BCAA, the CAA logo and its placement and the unregistered "on-ramp" trade-mark just below BCAA. On the Union site the trade-marks appear in a similar location, font and colour except that the CAA logo is upside down and the term used is "off-ramp". On the amended site the term BCAA is used in lower case.

[194] The current version of the Union website, which is not the subject of a copyright claim, does not have the trade-mark BCAA at all on the page other than as part of the domain name, the word off-ramp no longer appears and the colours and layout are significantly different.

[195] The plaintiff’s 1997 website was divided into 5 frames, or divisions of the site: the body frame, the side bar top frame, the side bar bottom frame, the header bar frame and the menu bar frame. According to Mr. Fitzgerald, these frames are virtually identical on the Union site. The frames were not altered by the amended Union site, but are substantially different on the current site. The defendant’s expert says that these design features represent the industry standard for enhancing navigation around a site and presenting branding elements.

[196] The plaintiff asserts that part of its overall artistic design is the features that allow for navigation around the site by way of navigation bars featuring hyperlinks to related content. The BCAA site contains two such navigation bars. The plaintiff says that the Union site also features two navigation bars but the second bar, the plaintiff says, is somewhat redundant. The plaintiff says that the navigation features on both sites are similar in visual appearance, although functionally different. The amended version of the Union website did not alter the page layout but the plaintiff says that the current Union site is substantially different. Mr. Ansell essentially describes the navigation features of the Union site as a routine design pattern, something I understand the defendant to say is not part of the copyright to which a party is entitled to for an artistic work.

[197] The plaintiff says that the plaintiff’s website incorporated certain website design features including certain frames that refuse to allow scrolling, certain frames with fixed margins, borders around frames that have been removed, and certain frames that refuse to allow the user to resize the frames. The defendant’s expert says that these are the result of standard design principles.

[198] Objectively, the original Union design and the 1997 BCAA website had a substantial degree of similarity including colours, the location of trade-marks, logos, webpage layout, and navigation features. This is not surprising given the fact that when the first Union website was designed, the designer, Mr. Mark Smeets, went to that site and looked at the design. He says that his instructions were to make a site similar, but not identical to BCAA’s site. The CAA logo was directly copied by Mr. Smeets for the defendant and the meta tags (which themselves are not part of the copyright claim) were directly copied. In Mr. Dave McPherson’s (a senior union representative) affidavit he said that he instructed Mr. Smeets to make the site similar in appearance to BCAA’s site. In doing that he saved the CAA logo, inverted it by mistake and put it on the Union website. The files responsible for the look, feel and artistic design of both websites have been saved under identical file names, which suggests that the defendant copied the BCAA website HTML code.

[199] There are extensive visual similarities between the 1997 BCAA site and the first Union website, and the inference that I conclude must be drawn on the evidence is that the author of the Union website has copied the plaintiff’s original website in the creation of the first Union website. The evidence I think shows that it was substantially copied. In fact, on the cross-examination of Mr. McPherson he said it would have been acceptable to him if it was absolutely identical.

[200] I think that it is clear that there has been copying of a substantial portion of the plaintiff’s first site. The look of the two initial sites, with the location of the logos, the colours and the size of the bars and the frames indicates that as a qualitative matter the plaintiff’s design was substantially copied. Although many of the elements of the design of a web page are commonplace and standard, the same might be said of most artistic works. It is the organization of those elements in a unique and original way that allows a party to have copyright protection. The plaintiff had done that. The 1997 website was an original artistic work. It had certain colours, frames, margins, logos, apparent navigation tools and a particular arrangement of those items.

[201] On the second Union website, the CAA logo was removed and the BCAA logo was changed to lower-case letters. Nevertheless, the colour scheme, page layout and other aspects of the graphic design remained the same. There has still been copying. The question I think is whether it has been shown that there was substantial copying. I similarly conclude that there has been and the second Union website, despite those changes, also infringed the plaintiff’s copyright.

[202] I turn to the defence advanced by the defendant.

[203] Section 29.1 of the Copyright Act provides:

[204] The Union, in its submission, described the BCAA website as a virtual storefront through which internet users may carry out transactions with BCAA and that in creating the Union website with visual elements used on the 1997 BCAA website, including the red, white, blue and black colour scheme, the Union says it sought to create the virtual equivalent of a picket line. The respondents say that they have fairly dealt with the various visual elements of the BCAA’s site. Further, they say that they copied elements of the website as a part of a process of criticizing and, to a limited extent, parodying the BCAA website.

[205] I disagree. It is not necessary for me to discuss the scope of this statutory provision for fair dealing for the purpose of criticism or review. I do not think the defendant’s use satisfies the fair dealing defence for the simple reason that the website contains no criticism of the BCAA website and it does not, as required by the statute, mention the source and author of the BCAA website.

[206] The Union is entitled to have a website and use it as part of its struggle but that does not give it the right to breach the plaintiff’s copyright. I have concluded that the first two Union websites breached the plaintiff’s copyright in the 1997 BCAA site.

[207] I will now turn to whether the first and second of the Union sites also amount to a passing-off. I will then assess damages and discuss the plaintiff’s other claims for relief.

 The Early Union Sites (Passing-Off)

[208] The issue still to be determined is whether there was a passing-off by either the first or second Union site.

[209] As I noted in the section concerning passing-off relating to the current Union website, the question is whether the defendant’s first two websites were a misrepresentation that either of these websites were affiliated with or were the websites of BCAA. The plaintiff’s claim of passing-off concerns all aspects of the first two Union sites including the look of the sites, the domain names and the meta tags. (The actual content of the first two Union sites, of course, was different from the content of the BCAA site, and related to the labour relations matters.)

[210] First, I will discuss whether the first Union site (which I found to be in breach of copyright) was also a passing-off. Was there a misrepresentation that this site was connected to or the site belonging to the plaintiff? The first Union site looked very similar to the 1997 BCAA site.

[211] Although to prove a passing-off a deliberate misrepresentation is not necessary, I think what was said in Brookfield, supra, is instructive:

  [at page 1059]

  I think that certain aspects of the initial Union sites demonstrate an intention to mislead people looking for the BCAA site in order to get the public to read what appeared on its website. I agree with the plaintiff that the phrase, "Greetings BCAA is on Strike," is inherently confusing because it gives no indication to the visitor that this is not a BCAA site. Additionally, I think that the similarities with the BCAA website design that were intentionally adopted and incorporated into the Union website suggest such an intention.

[212] A casual or hurried observer who had seen the BCAA site might well be confused that this was a BCAA sponsored site because of the striking visual similarities: the colour, the size of the font and the placement of the logos. I think it is significant that the initial meta tags, which have since been changed, duplicated the 1997 BCAA website meta tags and contained references that had nothing to do with the Union site. I expect that shortly after starting to examine the site, it would be apparent to the internet user that it was not a BCAA site but that recognition would not be immediate. Considering all of the evidence, I find that there was a misrepresentation that this site was somehow connected to the plaintiff’s site; I reach that conclusion taking into consideration the domain name, the look or design of the initial Union site, and the copied meta tags. I conclude that there would likely be confusion sufficient to constitute the tort of passing-off. In reaching that conclusion I am mindful that this is a labour relations matter, and not a commercial competition case. Although, as I have said, a balance must be struck, I think that the first Union site violated the plaintiff’s intellectual property rights and constituted passing-off.

[213] I conclude, however, that the changes made when the Union developed its second site reduced the possibility of confusion. The Union removed the CAA logo, changed the BCAA logo to lowercase lettering and moved the "Greetings" message so that most of that message could not be seen on a standard screen. I think that it is relevant that the parties are not commercial competitors. Accordingly, on a consideration of all of the evidence, I am not persuaded that the second Union site constitutes a passing-off.

 Damages

[214] The plaintiff claims damages for breach of copyright. Section 34 of the Act provides that an owner of the copyright is entitled to all remedies available at law, including an injunction and damages. Although s. 38.1 provides for statutory damages, that section was not in force when the infringement occurred.

[215] The plaintiff has not proven nor attempted to prove any actual pecuniary loss by reason of any breach of copyright or passing-off. Nor does it any longer claim exemplary damages.

[216] Fox on Copyright, supra, says:

  [at page 654-655]

[217] There is case authority that a plaintiff can be awarded damages at large for a copyright infringement: Underwriters’ Survey Bureau Ltd. v. Massie & Renwick Ltd., [1942] 1 D.L.R. 434.

[218] Is the plaintiff entitled to an award of damages at large and if so what is the amount of those damages? The defendant says that damages at large are only awarded where the plaintiff has suffered some actual damage, even though that loss may be difficult to quantify.

[219] What is the state of the evidence on the possibility of loss that has been suffered by the plaintiff?

[220] There is no evidence of loss of business or decreased revenue or reduction in visits to the BCAA website. There is no evidence of actual confusion or of member or customer complaints. There is no evidence of injury to reputation. The defendant points out that in a survey that was done by BCAA to determine public awareness of the strike, people were asked where they had heard or read about the strike. Respondents gave numerous sources but none of them mentioned the Union website.

[221] An owner of a copyright does not need to prove damages to be able to enforce its right. I think that it is also clear that there are situations where the loss suffered by a plaintiff is difficult to assess but on the evidence a loss is expected and damages may be assessed at large. However, what about situations where there is no loss shown or for that matter expected? Is the plaintiff entitled to damages at large, and if so in what amount?

[222] The plaintiff relies on a passage from Fox, supra, which cites Underwriters’, supra, as authority:

  The defendant suggests that in the absence of proof of actual damages, the plaintiff is not even entitled to nominal damages. The passage in Fox goes on to say:

  [at page 657-658]

[223] In Underwriters’, Maclean J. in the Exchequer Court increased an amount of a Registrar’s assessment of damages for breach of copyright in certain fire insurance plans and rating schedules. The judgment appeared to treat nominal and exemplary damages as part of the damages to be assessed at large. In that case the court appears to have concluded, following Exchange Telegraph Co. v. Gregory & Co., [1896] 1 Q.B. 147 (Eng.C.A.), that where there are damages suffered by a breach of copyright, there is no need for them to be specifically proven as they can be assessed as damages at large.

[224] The defendant referred to Anheuser-Busch, Inc v. Carling O’Keefe Breweries of Canada Ltd. (1986), 10 C.P.R. (3d) 433. The Federal Court of Appeal considered Underwriters’ and concluded that it did not stand for the proposition that an infringement of a trademark entitles one to nominal damages, even if no actual damages are suffered. Mahoney J. said that the plaintiffs in Underwriters’ were entitled to nominal damages because of the manner in which the defendant had infringed their copyright, not because of the bare fact of infringement.

[225] Is the plaintiff entitled to damages for breach of copyright?

[226] The plaintiff has not proven, and the circumstances do not suggest that there has been substantial damage. I think that in these circumstances the plaintiff has shown that its valuable intellectual property rights have been invaded, and although some loss should be inferred, no actual damage has been shown. The plaintiff has not shown that this is a case where there has been loss but that it is too difficult to show. Damages for passing-off however are presumed. Although the plaintiff has not demonstrated that this is an appropriate case for the assessment of damages at large, I think that the plaintiff is entitled to nominal damages for breach of copyright and passing-off.

[227] Accordingly, I award the sum of $2,500 as nominal damages for breach of copyright and passing-off.

 Personal Liability of Ronal Tuckwood

[228] The plaintiff also seeks an order that the Union president at the relevant time, Ronald Tuckwood, is personally liable for all the successful claims against the Union.

[229] Mentmore Manufacturing Co. v. National Merchandise Manufacturing Co. (1978), 40 C.P.R. (2d) 164 (F.C.A.), deals with the personal liability of corporate directors and officers in an intellectual property context. In that case, the plaintiffs claimed that the president and principal shareholder of a company should be personally liable for the company’s infringement of a patent relating to a retracting mechanism for ball-point pens. LeDain J. considered the circumstances in which such liability should be imposed:

  [at pages 172-174]

  Mr. Tuckwood acknowledges that he made the final decision to set up the Union website and that he gave his approval to anything of significance including the layout of the site, the use of the CAA logo and the words "BCAA off ramp".

[230] However, I am unable to conclude on the evidence that Mr. Tuckwood engaged in a "deliberate, wilful and knowing pursuit of a course of conduct that was likely to constitute infringement or reflected an indifference to the risk of it." The evidence that was presented to me does not satisfy me that any liability that has been incurred in this case by the Union should be personally imposed on Mr. Tuckwood.

 Other Relief

[231] The plaintiff also seeks a declaration, a permanent injunction, an order for delivery up of infringing materials, and an order to cancel or transfer to the plaintiff, the domain name registrations incorporating any of the plaintiff’s trade-marks.

[232] I am of the opinion that neither a declaration nor an injunction should be granted in this case. As stated by Dickson J. in Canada v. Solosky, [1980] 1 S.C.R. 821,

  [at page 832-833]

  The claim for relief in the form of an injunction and a declaration does not relate to live issues between the parties. The plaintiff has not been successful in establishing that the current Union website is a passing-off or a violation of section 22 of the Trademarks Act. The plaintiff was successful in demonstrating that the defendant’s first website constituted a passing-off and that both the defendant’s first and second websites infringed the plaintiff’s copyright in the design of the 1997 BCAA site. However, the plaintiff was unable to prove actual damages in respect of these infringements, and nominal damages have been awarded. Since those sites are no longer used, I do not think that a declaration or an injunction concerning them is appropriate. I find that a declaration would not be "capable of having any practical effect in resolving the issues in the case."

[233] I would also decline to order the defendant to cancel or deliver up and transfer the domain name registrations incorporating any of the plaintiff’s trademarks.

 Costs

[234] Counsel are at liberty to speak to the matter of costs.


"J.S. Sigurdson, J." The Honourable Mr. Justice J.S. Sigurdson

February 6, 2001 -- Memorandum to the Legal Publishers advising that on page 16, paragraph 47 item (d) should read as item (c).


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