Industry Committee on June 4th, 2007

[Gerry Byrne, Liberal, Humber—St. Barbe—Baie Verte, NL]

Thank you very much to our witnesses.

This law appears to be a very effective tool to bring a set of rules or order to the Vancouver Olympic Committee's process for financing their games. It allows quick action on the part of the Vancouver Organizing Committee to prevent Canadian-based businesses from commercially capitalizing without proper license agreements on the trademarks.

Say I own a small business and I've just ordered 185,000 T-shirts from Southeast Asia and I'm going to bring them in through the port of Halifax and I'm going to distribute those T-shirts through a network of students right across Vancouver Island. How does this law prevent me from doing that?

[Susan Bincoletto]

There are remedies in this law that are very similar to what is in existence now under the Trade-marks Act. I will ask my colleagues from the justice department to explain what kinds of measures are put in place to enable the Ministry of Public Safety, which is the ministry responsible for the border services agency, to actually detain and stop further distribution of allegedly infringing goods.

[Julie D'Amours]

We're assuming that the T-shirts are infringing, bearing a mark contrary to schedule 1 or 2. Basically, in a case like that, VANOC or the COC or the CPC content by VANOC may apply to the court to get an interim order that will direct the Minister of Public Safety to stop the cargo of T-shirts at the port of Halifax and detain them for a while.

[Gerry Byrne, Liberal, Humber—St. Barbe—Baie Verte, NL]

Can I interject with a quick question?

[Julie D'Amours]

Sure.

[Gerry Byrne, Liberal, Humber—St. Barbe—Baie Verte, NL]

VANOC would actually have to be aware that they are entering through the port of Halifax or Vancouver. Let's say Halifax. It's a more appropriate example, given that customs agents may be more alert to it in Vancouver. So VANOC would have to be aware that they're entering into the port of Halifax. They would then have to put forward the necessary prescription through the courts. In essence, there's a prescription against Canadian.... This law provides increased protection from Canadian-based infringers, but not necessarily against international-based infringers of trademark law.

[Julie D'Amours]

There is a border measure in place here. VANOC would have to provide enough evidence to get that court order. Obviously, they would have to know that the shipment is coming in to the port of Halifax and must be able to provide some level of detail to the Canadian Border Services Agency in order for them to be able to look for the shipment and detain it, and for the court to have sufficient grounds to give the order for a detention to take place. Of course, there's a level of uncertainty there.

[Gerry Byrne, Liberal, Humber—St. Barbe—Baie Verte, NL]

Ms. D'Amours, I appreciate the answer, but basically what it says to me is that there's a set of rules that would apply for the international shipment that would be a little bit more onerous than say for VANOC to come in and say, for example, a corner store is selling those T-shirts with the inscription, with the logo, the trademark on them. Very quickly, VANOC could move in on the corner store in downtown Victoria or Vancouver and seek a remedy. But it's a little more difficult to do it from an international perspective, if I'm reading it correctly, using those—

[Julie D'Amours]

Yes, simply because of the factual situation.

[Gerry Byrne, Liberal, Humber—St. Barbe—Baie Verte, NL]

Can I ask—

[Susan Bincoletto]

But in the Canadian cases, they still have to go and apply for an order, so it's the same thing.

[Julie D'Amours]

It's that they have more evidence with the corner store.

[Gerry Byrne, Liberal, Humber—St. Barbe—Baie Verte, NL]

Or you can bring in a large order across the border. That's the point.

The second issue is if this is sustainable law, should we also enact similar legislation for special events, momentary events, events such as the Ville de Québec commemoration, the 400th anniversary commemoration, because of course that too will be based on corporate sponsorships? There will be a trademark established, there will be a logo. Vancouver, the Olympics being a high-profile event.... There are others as well, obviously.

[The Chair, Conservative, James Rajotte]

Ms. Bincoletto.

[Susan Bincoletto]

This bill came to be created because the IOC requires that a host city for Olympic or Paralympic Games protect its marks, its indicia, and protect against ambush marketing. That's why we've done it in this case. There was an international commitment from the government to actually provide adequate protection to Vancouver in order to get the games. So we purposely left it Olympics-specific, because there is a danger that if we enlarge it, then concerns that have been expressed in terms of “need to“, “for exceptions”, and not to unduly interfere with legitimate businesses may increase in size. So on the basis of our commitment to the IOC, on the basis of discussions with VANOC, which has made a case to us that it needed additional protection for the specific event, we are making this proposal in this bill to apply specifically to the Olympics.

[The Chair, Conservative, James Rajotte]

Thank you.

Thank you, Mr. Byrne.

We'll go to Mr. Van Kesteren.

[Dave Van Kesteren, Conservative, Chatham-Kent—Essex, ON]

Thank you, Mr. Chair.

Thank you, witnesses, for coming again.

It has been charged that the bill lowers the bar for interlocutory injunction. Why is that?

[Susan Bincoletto]

I don't have my documents in front of me. I'm going to have to turn to my justice department lawyers, who have become indispensable in these cases.

You have to have a serious issue, you have to have balance of convenience, and you have to show irreparable harm. Those are the three tests. Again, it's a question of balancing the interests. You cannot simply decide that you want to stop somebody from selling T-shirts without having had a proper court look at the situation and determine that there has been abuse.

One of the most difficult tests in a number of intellectual property cases is showing irreparable harm. It is a lot easier to simply say you can continue to do that, but at the end of the day you will pay the penalty, and so be it. In the case of the Olympic Games, the threat of potential infringement is the greatest during that period, from February or even before. As soon as Beijing is over, all eyes will be on Canada, and the threat for infringement is going to be greater.

We need to have a special remedy to allow the activity to cease immediately. Waiving the irreparable harm is eliminating a big obstacle for the rights holders to actually stop the infringing activity, but it does not eliminate the other two tests, in which they have to show that it is a serious issue—in other words, they can't frivolously take everybody to court and stop everybody—and there has to be a balance of convenience so that the other party has the right to use the process fairly.

[Dave Van Kesteren, Conservative, Chatham-Kent—Essex, ON]

Have other countries followed this example? Are we following the example of other countries in this same procedure when they host the Olympic Games?

[Susan Bincoletto]

Yes, there have been a number of countries that have waived the irreparable harm test: Australia, New Zealand, the U.S.

[Dave Van Kesteren, Conservative, Chatham-Kent—Essex, ON]

Britain?

[Susan Bincoletto]

Has the U.K.?

[Julie D'Amours]

Yes, I believe so.

[Dave Van Kesteren, Conservative, Chatham-Kent—Essex, ON]

I get your drift.

What about the public education campaign that VANOC plans to roll out for the trademark enforcement? Can you tell us a little bit about that?

[Susan Bincoletto]

I think it would be more appropriate for you to ask the question to VANOC, who is just behind me.

But again, as part of the deliberations surrounding this bill, I think we took the commitment from VANOC to actually conduct that kind of education and to use educational tools prior to litigating very seriously. This is a piece of legislation that would help them, but they wouldn't necessarily use this to abuse their position.