PCTIA v. VCC - 2010

Citation:
Private Career Training Institutions Agency

v. Vancouver Career College (Burnaby)
Inc.,
2010 BCSC 765
Date: 20100528
Docket: S096031
Registry: Vancouver
IN THE MATTER OF SECTION 24 OF THE

PRIVATE CAREER TRAINING INSTITUTIONS ACT, S.B.C. 2003, c. 79
Between:
Private Career Training Institutions Agency
Petitioner
And
Vancouver Career College (Burnaby) Inc.
d.b.a. Vancouver Career College and CDI College,
Vancouver College of Art and Design
Respondents
Before: The Honourable Mr. Justice G.R.J. Gaul
Reasons for Judgment

Counsel for the Petitioner:
N. T. Mitha
A. Alibhai
Counsel for the Respondents:
L. Brasil
W. Branch
Place and Date of Hearing:

Place and Date of Judgment:
Vancouver, B.C.
October 16 and November 5, 2009
Vancouver, B.C.
May 28, 2010
2010 BCSC 765 (CanLII)
IN THE SUPREME COURT OF BRITISH COLUMBIA
Private Career Training Institutions Agency v.

Page 2
Introduction
The petitioner, the Private Career Training Institutions Agency (the Agency),
is a provincial regulatory body created by the Private Career Training Institutions

Act, S.B.C. 2003, c. 79 (the Act), to oversee career training institutions that operate
throughout British Columbia.
[2]
Vancouver Career College (Burnaby) Inc. (VCC Inc.) provides a variety of
post-secondary educational services under various business names, including

Vancouver Career College (VCC), CDI College (CDI) and Vancouver College of
Art and Design (VCAD). At all material times, each of VCC, CDI and VCAD were
registered with the Agency as career training institutions. As members of the
Agency, the respondents and each of them are obliged to comply with its bylaws.
[3]
For the sake of convenience and clarity, I will refer to all of the respondents
collectively as VCC Inc.

Nature of Relief Sought
[4]
The Agency seeks a permanent injunction restraining VCC Inc. from
contravening Bylaw 29 of the Private Career Training Institutions Bylaws (the

Bylaws) which prohibits misleading advertising.
[5]
Specifically, the Agency seeks an order prohibiting VCC Inc. from using the
business names of other member institutions in connection with its internet

advertising strategy.
Issue
[6]
The issue before the Court is whether VCC Inc.s internet marketing strategy
and mode of promoting itself is false, deceptive or misleading and therefore in

breach of the Agencys bylaw relating to advertising.
[1]

[7]
Page 3
Both parties have agreed that if the answer to the question is affirmative, then
the injunction sought by the Agency should be granted. Inversely, if the answer is
Facts
Jurisdiction of the Agency
[8]
The objects of the Agency are set out in s. 3 of the Act as follows:
a)
To establish basic education standards for registered institutions and
to provide consumer protection to the students and prospective students of
registered institutions;
b)
To establish standards of quality that must be met by accredited
institutions;
c)
To carry out, in the public interest, its powers, duties and functions
under this Act.
[9]
Section 6 of the Act permits the Agency to enact bylaws to regulate the
conduct of its member institutions. In particular, s. 6(1)(m) authorizes the Agency to

enact bylaws regulating and prohibiting advertising or types of advertising used by
registered or accredited institutions.
[10]
The Bylaws came into effect on June 1, 2009. Bylaw 29(1) of the Bylaws is
the subject the present dispute as it prohibits false and misleading advertising.
Bylaw 29(1) states:
An Institution must not engage in advertising or make a representation that is
false, deceptive or misleading. Deceptive advertising includes but is not
limited to an oral, written, internet, visual, descriptive or other representation
that has the capability, tendency or effect of deceiving or misleading a
consumer.
[11]
Bylaw 29(2) requires that an Institution must use the operating name under
which it is registered by the Agency in advertising.

[12]
There has been no challenge to the validity of the Act or the Bylaws; as a
result, the jurisdiction of the Agency to enact and enforce the Bylaws is not in issue.
negative, then no injunction is warranted and the petition should be dismissed.

[13]
Page 4
The Agencys petition for an injunction is founded upon s. 24(1)(a) of the Act
24 (1) On application by the agency, the Supreme Court may grant an

injunction
(a)
restraining a person from contravening this Act, the regulations

or the bylaws if the court is satisfied that there are reasonable
grounds to believe that the individual or organization has
contravened or is likely to contravene this Act, the regulations,
or the bylaws.
Keyword Advertising Generally

[14]
Internet search engines collect and store data about websites, including
keywords contained in the website and the location of the website. When a user
enters a query into a search engine such as Google or Yahoo, the search terms are
compared to the website information stored in the search engine. The search engine
then produces a list of websites, which are ranked according to relevance, as
determined by the search engine.
[15]
One way in which a website operator can attempt to increase the traffic to
their website is through the use of pay-per-click advertising. The relevant form of
pay-per-click advertising in the case at bar is keyword advertising (Keyword
Advertising). This service allows the website operator to pay search engines for
links to their websites to appear as sponsored links alongside the search engines
normal or organic search results.
[16]
In order to use Keyword Advertising, a website operator will create an
advertisement which specifies certain keywords to describe their website and set the
maximum price they are willing to pay to use those keywords. The keywords then
act as a trigger causing the advertisement and the associated link to be displayed.
Specifically, when a user enters a search query containing a triggering keyword, the
search engine checks to see which advertisement is most relevant and has placed
the highest bid for the selected keywords. These advertisements and the associated
links are displayed as sponsored links in a prominent location among the organic
which stipulates:

Page 5
search results. If the user selects one of the sponsored links, that website is charged
according to its bid.
The website operator will provide instructions to the search engine as to how
much money they want to spend in a particular advertising campaign. Those

instructions can be modified daily, depending on the success of the keywords or
campaign. Once the maximum amount of money to be spent in a campaign is
exhausted, including daily maximums, the online advertisement will stop appearing
when the keywords are searched.
[18]
Assuming there are funds available in a campaign, all bids on keywords will
result in the online advertisement being displayed if those keywords are used in
conjunction with an online search. The higher the bid, the higher the placement of
the online advertisement. Bids that are not high enough will result in online
advertisements that do not appear on the first results page, which is the most
desirable placement.
[19]
Typically, Keyword Advertising is purchased in a campaign where keywords
are grouped around themes aimed at specific marketing goals. For example, an
advertising campaign built around online degrees could include keywords such as
online, online degrees, online education, online studies, online training and
internet training. The idea is to try to predict what terms the searcher will use when
looking for a product or service.
[20]
The keyword does not need to match the exact search term entered by the
internet user in order to trigger the occurrence of a sponsored link. For example, if
one bids on the keyword college and the user searches Vancouver colleges, the
results could include the sponsored link.
[21]
In addition, keywords are not case sensitive, so if a user searches Business,
it may trigger the occurrence of a sponsored link where the word business was bid
on.
[17]

[22]
Page 6
The actual online advertisement that appears as a part of Keyword
Advertising typically consists of a title, a description and a URL, and have to fit within
For Google online advertisements, the title line is limited to 25 characters;

the two description lines are limited to 35 characters; and the URL is
limited to 35 characters;
For Yahoo online advertisements, the title line is limited to 40 characters;

the two description lines are limited to 70 characters; and the URL is
limited to 40 characters.
[23]
In the context of the present dispute between the parties, it is important to
note that the advertisements that are listed in the search results as sponsored links
do not displace or replace the organic search results that typically appear free of
charge when a user conducts an online search. The sponsored links are displayed
along with the organic search results and appear either to the right of the organic
search results, separated by a vertical line, or above the organic search results,
within either a yellow or blue shaded box. In both cases, the sponsored links are
clearly designated as such or as sponsor results.
[24]
It is also important to note that the person who has conducted a search and
who has chosen to examine a sponsored link can always click on the back button
on their browser and return to the original search results page to locate other sites of
interest.
[25]
Website operators will sometimes specify trademarks or operating names of
their competitors as triggering keywords, since these terms are often not bid on,
even by their rightful owner. If the owner of the trademark or operating name has not
specified their trademark or operating name as a triggering keyword in conjunction
with Keyword Advertising, or if their bid for these keywords is too low, other
advertisements may appear as a sponsored link and can outrank the rightful owner
of the trademark or operating name. Again, it is important to remember that the
the following prescribed limits:

Page 7
rightful owner of the trademark or operating name will still appear as part of the
organic search results; they will simply not be positioned in the sponsored links
[26]
Although some of the materials filed by the Agency complain of VCC Inc.s
possible use of competitors trademarks in its metatags, the evidence before the
Court does not support such a conclusion. On the contrary, VCC Inc. has specifically
denied it has ever used the names of competitors or trademarked terms in the title
line, description line or URL of its online advertisements, and I accept that as a fact.
The Use of Keyword Advertising by VCC Inc. and Other Institutions
[27]
Given the demographics and generally high level of computer literacy of
prospective students of VCC Inc. and other private educational institutions, internet
advertising has become increasingly important over time for all such institutions.
Internet searches can often yield between 20,000 to 2,500,000 results and therefore
it is an accepted fact that search engine optimization is critical within the context of
online advertising.
[28]
VCC Inc.s search optimization efforts include pay-per-click Keyword
Advertising services provided by Yahoo and Google under the names Search
Marketing or Google AdWords.
[29]
VCC Inc. acknowledges that it uses Keyword Advertising extensively, bidding
on an excess of 7,000 keywords through Google and Yahoo.

[30]
In or around December 2008, VCC Inc. began using the business names of
other institutions as triggers for Keyword Advertising. This led to VCC Inc. having
their school names come up as the first sponsored link when the name of a different
institution was searched.
[31]
Throughout the various affidavits filed there are a number of examples of the
sponsored links that appeared as a result of a variety of search terms:
area of those results.

Page 8
A May 4, 2009 search for the term vanarts on Google resulted in the first
sponsored link belonging to VCAD. The sponsored link had the title New
URL and description: www.VCAD.ca Career focused, lower tuition costs

Interior + Fashion, Graphic, 3D;
A May 8, 2009 and May 12, 2009 search for the term vanarts on Google
resulted in the first sponsored link belonging to VCAD. The sponsored link
had the title Art Institute Vancouver in large font. Underneath the title
was the following URL and description: www.VCAD.ca VCAD - Graphic
Design, 3D Animation Interior + Fashion Design Programs;
A June 6, 2009 search for the term vanarts on Google resulted in the first
sponsored link belonging to VCAD. The sponsored link had the title
Vancouver Art College in large font. Underneath the title was the
following URL and description: www.VCAD.ca VCAD - Graphic Design,
3D Animation Interior + Fashion Design Programs;
August 4, 2009 searches for the terms vfs, Vancouver film school and
art institute of Vancouver on Google all resulted in the first sponsored
link belonging to VCAD. The sponsored link had the title Vancouver Art
College in large font. Underneath the title was the following URL and
description: www.VCAD.ca VCAD Graphic Design, 3D Animation
Interior + Fashion Design Programs;
An August 5, 2009 search for the term vanarts on Yahoo resulted in the
first sponsored link belonging to VCAD. The sponsored link had the title
following URL and description: VCAD Graphic Design, 3D Animation
Interior + Fashion Design Programs.
Go. www.VCAD.ca/vancouverartcollege;
Vancouver Art School in large font. Underneath the title was the following

Page 9
August 5, 2009 searches of the terms Vancouver film school and art
institute of Vancouver on Yahoo resulted in the second sponsored link
College in large font. Underneath the title was the following URL and
description: VCAD Graphic Design, 3D Animation Interior + Fashion
Design Programs. Go. www.VCAD.ca/vancouverartcollege; and
An August 6, 2009 search for the term vanarts on Google resulted in the
first sponsored link belonging to VCAD. The sponsored link had the title
following URL and description: www.VCAD.ca VCAD Graphic Design,
3D Animation Interior + Fashion Design Programs.
[32]
There is also evidence that other accredited institutions use Keyword
Advertising:
A July 15, 2009 search for the term CDI College on Google resulted in
the first sponsored link belonging to the Art Institutes. The sponsored link
had the title BC Design College in large font. Underneath the title was
the following URL and description: The Art Institutes Get Info on the
Media Arts Program. www.artinstutites.edu. Clicking on the web address
led to the webpage for the Art Institute of Vancouver (AIV), a competitor
of VCC Inc.s;
A September 15, 2009 search for the term VCAD on Google resulted in
the first sponsored link belonging to the Art Institutes. The sponsored link
had the title The Art Institutes in large font. Underneath the title was the
following URL and description: www.artinstitutes.edu Pursue Your
Passion. Get Info on Classes in Vancouver. Apply Now! Clicking on the
web address led to AIVs webpage; and
A September 25, 2009 search for the terms Vancouver College of Art and
Design and Vancouver Career College on Google resulted in a
belonging to VCAD. The sponsored link had the title Vancouver Art

Page 10
sponsored link for The Art Institute Offers and The Art Institute of BC
both of which led to the AIVs webpage.
[33]
Beginning in April 2009, the Agency received complaints from several
member institutions, including AIV, regarding VCC Inc.s use of Keyword

Advertising.
[34]
At their meeting on June 18, 2009, the Agencys Board of Directors discussed
the issue of the use of AdWords marketing by some member institutions, including
VCC Inc.
[35]
On June 24, 2009, as a result of a motion passed at the Boards meeting of
June 18, the Agency sent to all of its member institutions the following Bylaw
Interpretation / Information Guideline (the Interpretation Guideline) regarding
Bylaw 29(1):
With respect to internet advertising, the PCTIA Board agreed by motion at its
meeting of June 18, 2009 that the use of another institutions trademarks,
logo, or business name, or anything confusingly similar, by a registered
institution in any metatags (website or html), search engine AdWords,
adCenter keywords, or any similar medium for advertising purposes shall
constitute false, deceptive or misleading activity within the meaning of Bylaw
29(1), and is prohibited.
[36]
The Interpretation Guideline was issued to articulate the Agencys view of the
purpose and scope of Bylaw 29. It was not intended to have and does not have the
same force as a bylaw under the Act and is not a tool the Court can use in its
statutory interpretation of Bylaw 29.
[37]
In or around the time the Interpretation Guideline was issued, the Agency
received complaints from two students who claimed they had been misled by the
internet advertising of VCC Inc.
[38]
The first student, Carlin Eppele, searched the term Vancouver Community
College and subsequently clicked on a sponsored link for VCC. Ms. Eppele followed
Chronology of Complaints

Page 11
through with VCC and eventually registered for a course at that institution before
realizing that it was not the institution she had intended on attending.
It should be noted that Ms. Eppele registered with VCC after having had a
one and one-half hour personal interview with a VCC representative, as well as
having met with a financial administrator of the institution and successfully
completed an admissions test.
[40]
When Ms. Eppele discovered she had registered at VCC in error, she was
able to withdraw from the institution and receive a refund of the registration fee she
had paid.
[41]
The second student, Janessa Patterson, had heard of the Vancouver Institute
of Media Arts (VanArts) through advertising and searched the term VanArts on
the internet to obtain further information about the institution. The results of her
search disclosed sponsored links for both VanArts and VCAD. Ms. Patterson
followed the first link to the VCAD website because she assumed that VCAD was
another name for VanArts, because the link to this website had come up in response
to my Google search for VanArts. She subsequently filled out the form to request
additional information about the institution available on that website. Ms. Patterson
also followed the second link, because she assumed that this was another website
for VanArts. She also filled out the form available on that website to request
additional information about the institution. When she was contacted by both
institutions, she realized they were different, and cancelled her appointment with
VCAD because they did not offer the program I wanted to enrol in. As such, I did
not want to waste my time touring VCAD.
Position of the Agency
[42]
The Agency argues that it has been vested with the regulatory power to
provide consumer protection to students and prospective students of registered

institutions and to regulate the quality of these institutions. According to the Agency,
the issue before the Court must be examined from a consumer protection
[39]

Page 12
prospective and not one concerned with the restriction of trade between commercial
parties.
The core of the Agencys argument is that Bylaw 29 was created and enacted
to protect the consumer, in this case students or potential students, by prohibiting

member institutions from engaging or using advertising which has the capacity of
being deceptive or misleading. The Agency maintains that there is no exception for
advertisements which temporarily mislead students. Consequently, the Agency
asserts that an advertisement is prohibited when it may mislead some of the people,
some of the time, even if, upon being misled, those people are subsequently
informed of their mistake and are able to correct it.
[44]
The Agency alleges that VCC Inc. has engaged in false, deceptive or
misleading advertising, contrary to Bylaw 29 in two different ways:

a)
Using competitors business names as keywords in their Google or

Yahoo advertisements; and
b)
[45]
Failing to use its own business name in its internet advertising.
In advancing its claim that VCC Inc.s internet advertising program breaches
Bylaw 29, the Agency asserts that the strategy is clearly designed to lead students
seeking information about one institution away from that institution and towards one
of its own.
[46]
The Agency maintains that if the Court is satisfied that VCC Inc.s actions
have or may have the effect of leading a potential student astray or provide them
with an incorrect impression about the services being offered by other institutions
registered with the Agency, then VCC Inc.s conduct violates Bylaw 29.
[47]
The Agency points to Ms. Eppele and Ms. Patterson as real-life examples of
consumers who were allegedly misled when they conducted internet searches, and
uses them as proof that VCC Inc.s advertising offends Bylaw 29.
[43]

Page 13
Position of VCC Inc.

[48]
VCC Inc. has candidly acknowledged that as a part of its on-going
Advertising on Yahoo and Google. It argues that a significant portion of students

who originate from web inquiries come from Keyword Advertising and therefore this
means of advertising is a vital element of its online marketing strategy.
[49]
VCC Inc. denies that such an advertising practice is false, deceptive or
misleading and in any way in breach of Bylaw 29. Similarly, it denies that it has
engaged in any online advertising without using its registered operating name.
[50]
VCC Inc. asserts that its internet advertising strategy is essentially a modern-
day technological version of the generally accepted marketing practice of a company

placing its advertisement in close proximity to a competitors advertisement.
[51]
VCC Inc. maintains that the Agency has no factual foundation to claim VCC
Inc.s internet advertising strategy is confusing or misleading to prospective

students. In particular, VCC Inc. argues the two cases proffered by the Agency as
examples of students led astray by VCC Inc.s internet advertising are of little
evidentiary value as they eventually obtained what they were searching for and were
therefore not misled or deceived.
[52]
VCC Inc. claims that the Agencys position on Bylaw 29 as evidenced by its
Interpretation Guideline and its decision to treat the bidding on trade names or
business names as part of Keyword Advertising as false, deceptive or misleading
advertising, is a reverse engineered attempt to respond to the concerns of other
competitor institutions, not student concerns. In making this point, VCC Inc.
underscores the suspicious fact that it was only after the Agency had concluded that
the type of internet advertising VCC Inc. uses breaches Bylaw 29 that the complaints
of Ms. Eppele and Ms. Patterson arose.
promotional program, it bids on certain business names in connection with Keyword

Page 14
Jurisprudence
[53]
The proper approach to the interpretation of Bylaw 29 is set out in E.A.
affirmed by Iacobucci, J. in Bell ExpressVu Limited Partnership v. Rex, [2002]

2 S.C.R. 559, 2002 SCC 42, at para. 26:
Today there is only one principle or approach, namely, the words of an Act
are to be read in their entire context and in their grammatical and ordinary
sense harmoniously with the scheme of the Act, the object of the Act, and the
intention of Parliament ... [Driedgers Modern Approach].
[54]
In Director of Trade Practices v. Household Finance Corporation of Canada,
[1976] B.C.J. No. 1316 (S.C.) the Court was faced with an alleged breach of s. 2(1)
of the former Trade Practice Act, R.S.B.C. 1974, c. 96 (now repealed), which read in
part:
2 (1)
For the purposes of this Act, a deceptive act or practice includes

(a)
any oral, written, visual, descriptive, or other representation,

including non-disclosure; or
(b)
any conduct
having the capability, tendency, or effect of deceiving or misleading a

person.
[55]
In addressing the meaning of misleading, Hutcheon J. observed at paras. 18
and 20:
[18]
There is no definition in the Act of deceiving or misleading. A
dictionary definition of mislead which seems to me to convey the flavor of
the representations stated in s. 2(3) to constitute a deceptive act or practice is
to lead astray; to cause to go in the wrong direction (Dictionary of Canadian
English The Senior Dictionary).
[20]
Having in mind the examples of deceptive acts given in s. 2(3), I
conclude that an act having the tendency of deceiving or misleading a person
is one that tends to lead that person astray into making an error of judgment.
[56]
The meaning of mislead was also considered in Lotte Enterprises v. B.C.
(Private Post-Secondary Education Commission), 2001 BCSC 1613. In that case,

Pitfield J. quashed an order of the Agencys predecessor, the Private Post-
Driedger, The Construction of Statutes (Toronto: Butterworths, 1974) at p. 67 and

Page 15
Secondary Education Commission, which directed a registered institution to refund

the tuition fees of a student because of an alleged misrepresentation on the part of
question of whether the student in question was misled by the representation,

Pitfield J. opined at para. 23:
There is no reason to give the word misled any meaning other than that
which it has in its ordinary context. In the Shorter Oxford English Dictionary
mislead is defined to mean lead astray in action or conduct; cause to have
an incorrect impression or belief; lead or guide in the wrong direction. In
another authority to which I was referred, mislead is described as caused
to have a wrong impression about someone or something.
[57]
While counsel were unable to bring to my attention any Canadian
jurisprudence that has directly addressed Keyword Advertising, this kind of

marketing has been the subject of judicial consideration in the United States.
[58]
Merck & Co. V. Mediplan Health Consulting, 425 F. Supp. 2d 402 (U.S.D.C.,
N.Y.), a decision of the United States District Court for the Southern District of New
York, involved six cases all relating to the operations of Canadian online pharmacies
selling generic versions of the plaintiffs medication Zocor to U.S. consumers.
Several of the defendants promoted their services by way of Keyword Advertising
with Google and Yahoo, so that when a consumer searched the internet using either
of those search engines and entered the word Zocor as its query, the defendants
websites were listed in a prominent position in the search results as sponsored
links. In granting the defendants motion to dismiss a claim based upon the bidding
on trademarks in connection with Keyword Advertising, Chin D.J. concluded:
Here, in the search engine context, defendants do not place the ZOCOR
marks on any goods or containers or displays or associated documents, nor
do they use them in any way to indicate source or sponsorship. Rather, the
ZOCOR mark is used only in the sense that a computer users search of the
keyword Zocor will trigger the display of sponsored links to defendants
websites. This internal use of the mark Zocor as a key word to trigger the
display of sponsored links is not use of the mark in a trademark sense...
As the Second Circuit observed in 1-800 Contacts, [a] companys internal
utilization of a trademark in a way that does not communicate it to the public
is analogous to an individuals private thoughts about a trademark. 414 F.
3d at 409 ... Moreover, it is significant that defendants actually sell Zocor ...
the institution regarding the qualifications of its instructors. When addressing the

Page 16
on their websites. Under these circumstances, there is nothing improper with

the defendants purchase of sponsored links to their websites from searches
of the keyword Zocor.
In Government Employees Insurance Company v. Google Inc. et al., 2005
U.S. Dist. LEXIS 18642 (E.D. Va.), the United States District Court for the Eastern
District of Virginia (Alexandria Division) found that no confusion arose from Googles
use of the plaintiffs trademark as a keyword. The plaintiffs in that case alleged that
Google had engaged in unfair competition by, amongst other things, allowing
advertisers to bid on the term Geico for the purposes of Keyword Advertising. In
particular, Geico argued that the sponsored links which appeared when customers
searched for the term Geico were misleading because of the implied association
of those sites with the Geico search term. In rejecting this argument, the Court
concluded that as long as the word Geico did not appear in the heading or text of
the advertisement, there was no likelihood of confusion.
[60]
The final American authority that I will reference is J.G. Wentworth, S.S.C.
Limited Partnership v. Settlement Funding LLC, 2007 U.S. Dist. LEXIS 288 (E.D.
Penn.). In that case the plaintiff, a finance company, alleged that a competitor was
engaged in acts of trademark infringement, false representation, and injury to
business reputation in connection with the use of the plaintiffs name in its Keyword
Advertising efforts. The defendant brought a motion to dismiss the plaintiffs claim on
the basis that there was no likelihood of confusion. In allowing the application and
dismissing the claim, ONeil J. of the United States District Court for the Eastern
District of Pennsylvania concluded:
Likelihood of confusion exists where consumers viewing the mark would
probably assume that the product or service it represents is associated with
the course of a different product or service identified by a similar mark ...
...
I respectfully disagree with the Ninth Circuits conclusion in Brookfield. The
Court asserted that [w]eb surfers looking for [plaintiffs] MovieBuff products
who are taken by a search engine to [defendants website] will find a
database similar enough ... such that a sizeable number of consumers who
were originally looking for [plaintiffs] product will simply decide to utilize
[defendants] offerings instead. Id. I find this to be a material
[59]
Page 17
mischaracterization of the operation of internet search engines. At no point

are potential consumers taken by a search engine to defendants website
due to defendants use of plaintiffs marks in meta tags. Rather, as in the
present case, a link to defendants website appears on the search results
page as one of many choices for the potential consumer to investigate. As
stated above, the links to defendants website always appears as
independent and distinct links on the search results page regardless of
whether they are generated through Googles AdWords program or search of
the keyword meta tags of defendants website.
[61]
Although apparently no Canadian court has opined on the propriety of
Keyword Advertising that uses the business name of competitors, in my view resort
can be had to the Canadian jurisprudence that has developed in the area of
trademark law in order to glean what is meant by the term confusing or
misleading in the context of alleged improper advertising. An essential element to a
claim of statutory passing-off under s. 7(b) of the Trade-marks Act, R.S.C. 1985,
c. T-13 is the presence of confusion.
[62]
To determine whether trademarks are confusing, the Court must make a
determination of their effect on those persons who normally comprise the relevant
market. The average consumer will not be the same for different products, and will
not have the same attitude at the time of purchase: United Artists Corp. v. Pink
Panther Beauty Corp. (1998), 80 C.P.R. (3d) 247 (F.C.A.).
[63]
Moreover, in assessing the likelihood of confusion, the Court ought to give the
average consumer a certain amount of credit. Consumers are not generally

completely devoid of intelligence or of normal powers of recollection; nor are they
totally unaware or uniformed as to what goes on around them. The overriding
consideration regarding the likelihood of confusion is all the surrounding
circumstances. This allows the Court to examine and assess any and all facts
peculiar to the case before it: Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22.
Analysis
[64]
At the outset I note that I do not find, on the evidence before me, that VCC
Inc. uses or has used metatags in its internet advertising program. This argument


Page 18
was not advanced with any vigour by the Agency and I find its decision not to do so
was appropriate in the circumstances of this case. Nor do I find that the institutions
advertising.
[65]
The only question before me is whether VCC Inc.s use of Keyword
Advertising and more particularly the adoption and use of competitors names in that
form of internet marketing is misleading.
[66]
I accept the Agencys argument that the Courts analysis must not lose sight
of the Agencys consumer protection mandate and the fact that Bylaw 29 was
passed in order to protect any potential student from being deceived and potentially
harmed by misleading advertising.
[67]
In the present case, the services that are being advertised through VCC Inc.s
online advertising campaign are post-secondary education courses which can range
from 3 to 18 months in terms of study commitment and cost between $4,000 and
$24,000. Embarking upon an educational program involves a serious decision and,
in my view, the extent of the financial and personal commitment expected of
prospective students requires that they should, and can be expected to, exercise a
high degree of care in making their decisions as to which school they should attend.
[68]
The Agency says the conduct of VCC Inc. in purchasing the words of a
competitors name for the purposes of Keyword Advertising on the internet is

designed to do one thing: lead prospective students seeking information about the
competitor institution away from that institution and towards its own institutions. The
Agency says that on a plain, purposive reading of Bylaw 29, VCC Inc.s use of other
institutions names for Keyword Advertising has actually and will continue in the
future to deceive and mislead students and potential students.
[69]
The Agency has offered two examples of students who apparently went to the
website of a VCC Inc. institution when they thought they were going to some other
that form part of VCC Inc. have failed to use their proper names in their internet

Page 19
institutions website. In my view, these mistakes on the part of the students were not
prompted or caused by VCC Inc.s Keyword Advertising.
In the spring of 2009, Ms. Eppele was interested in pursuing a career as a
pharmacy technician. She had been told by a friend that Vancouver Community
College offered such a program and decided to make further inquiries to determine if
she should register for that program. As a part of her investigation, Ms. Eppele
conducted an internet search which she describes as follows:
After Googling Vancouver College, I clicked on the first listing which came up.
The first listing was in a slight brownish yellowish tinge, and I thought that it
was the Vancouver Community College. I did not realize at the time that it
was in fact Vancouver Career College.
In any event, I clicked on the first item which came up in the Google search,
and called for directions and an appointment.
I made an appointment for June 1, and attended at the appointment and met
with a woman by the name of Ms. Elizabeth Liang. I asked Ms. Liang some
questions, and particular questions about the practicum, and was told that it
would likely not be in a hospital, but that maybe I could arrange for that on my
own. I was a little bit surprised, but thought that perhaps my friend had
misinformed me about this aspect of the course. In any event, thinking that I
was signing up with the Vancouver Community College, I signed up, and
registered for the course.
One day later, on June 2, I realized that I had signed up for a course with the
incorrect institution ...
...
I had always intended to sign up for the course with the Vancouver
Community College, and had in fact Googled Vancouver Community College
in order to find information about them and to take the course there. When I
saw the first result of the Google search, I simply clicked on it and I was
misled into thinking that it was the Vancouver Community College.
[71]
In my opinion there are a number of important questions left unanswered by
Ms. Eppeles evidence:

a)
When she called the telephone number she obtained from her internet
search and spoke with a representative of VCC, did she tell that
person that she was looking to register at Vancouver Community
College?
[70]

b)
Page 20
When she met with Ms. Liang of VCC, did Ms. Eppele say she wanted
to register at Vancouver Community College? Of the questions she
Community College and Vancouver Career College were the same or

associated institutions?
c)
When she became surprised that the program offered by VCC did not
match the description of the program she was looking for, did she tell
Ms. Liang what her friend had told her about the Vancouver
Community College program?
[72]
On the whole, I am unconvinced by Ms. Eppeles evidence and reject the
assertion that she was deceived or misled in any way by VCC Inc. Ms. Eppele
obviously did not examine the results of her Google search very closely, as if she
had, she would have discovered that the choice she made was not the one she
wanted. That fact was, or should have been, clear to her. By simply clicking on the
first result she found without properly examining it before she did, I find Ms. Eppele
was careless and the resulting problems she had flowed from that fact and not from
anything done by VCC Inc.
[73]
In my view, the second example of what the Agency claims is a student who
was victimized by the misleading advertising of VCC Inc. suffers from similar
weaknesses as the first. Ms. Patterson is presently enrolled at VanArts and she
summarizes her internet search experience and eventual enrolment at VanArts as
follows:
During May of 2009, I came across an advertisement for VanArts which was
posted on the social networking site Facebook. In order to obtain more
information about the institution, I went to the internet and typed the name
VanArts into the Google search engine.
My search resulted in several links with the first being a link to the website for
Vancouver Art College and the second being a link to the website for
VanArts School. Based on my search terms, I thought that both websites
were for VanArts or institutions affiliated with VanArts. As such I decided to
visit both websites ...
says she asked Ms. Liang, did Ms. Eppele ask whether Vancouver
Page 21
I clicked on the first link for Vancouver Art College, and was taken to a
website for the Vancouver College of Art and Design (VCAD). I assumed
that VCAD was another name for VanArts because the link to this website
had come up in response to my Google search for VanArts. I did not study
the website in any great detail, but simply filled out the form to request
additional information about the institution ...
I then went back to my Google search results and clicked on the second link
for VanArts School. I was taken to another website, which looked very similar
to the first. I assumed that this was another website for VanArts. Again, I did
not study the website in any great detail, but simply filled in the form to
request additional information about the institution.
[74]
Ms. Patterson was puzzled when she was contacted by both schools to
arrange for tours of their respective facilities. She conducted another Google search
for VanArts and again found in the search results links for both VanArts and VCAD.
According to Ms. Pattersons evidence, It was at that point that I began to suspect
that the two institutions may not actually be related.
[75]
I find Ms. Patterson was as imprudent as Ms. Eppele when she conducted
her internet search. Moreover, I find Ms. Patterson was not misdirected or led astray
by anything other than her own oversight. I accept Ms. Patterson developed an
incorrect impression; however that impression was not caused by VCC Inc. Had
Ms. Patterson paid a reasonable amount of attention to what she was doing, she
would have noticed that VCAD and VanArts were not the same institutions.
Moreover, had Ms. Patterson asked either institution whether it was the same as or
associated with the other, she would have immediately discovered they were not.
There was, in my opinion, no rational foundation for Ms. Patterson to assume the
institutions were the same or associated. Ms. Patterson, like Ms. Eppele, was not
misled, she was mistaken, and the cause of her mistake was not any deception on
the part of VCAD; it was because, as she notes, she did not study the website in
any great detail.
[76]
In advancing its position, the Agency asks rhetorically: why would a
prospective student who searches for one institution on the internet make an inquiry
of another institution whose name appears on the search results? In answering its
own question, the Agency argues the student must have been duped into doing so


Page 22
by the deceptive advertising of the other institution. I reject this argument. The
student could just as easily have been interested in a certain program, such as a
a certain institution offered such a program. Upon examining the results of her
internet search she would see the institution she was looking for as well as others,
including those institutions that have used Keyword Advertising to locate their
respective advertisements in the more prominent sponsored links position. The
student then has an option. She can examine the website of the institution she was
initially looking for that appears in the organic results of her search or she can
examine other institutions, including those listed as sponsored links. The results of
her search do not force her, trick her, or tell her to examine those institutions located
in the sponsored links. If she chooses to investigate those other institutions, she
does so of her own volition. Having done so, she is able to quickly and easily retreat
from that inquiry and return to her original search results page, with no harm done.
[77]
In my view, the answer to the question posed by the Agency does not have to
lead to the conclusion that the second institution, having used Keyword Advertising
incorporating the business name of its competitors, is attempting to misdirect
students away from the competitors website and improperly and deceptively
towards their own website.
[78]
The Agency has not persuaded me that VCC Inc.s Keyword Advertising
strategy has actually or could in the future lead a potential student astray or into
making a harmful error of judgement. Where a student erroneously chooses to
examine a VCC Inc. sponsored link website instead of the website of the institution
they originally wanted, I am satisfied the information readily available on the various
VCC Inc. websites is more than adequate to inform the student that they are
examining a VCC Inc. institution and not the one they were initially searching for.
The student can then easily return to their search results and locate the website of
the institution they desire. I am also satisfied, on the evidence presented, that
students who actually contact and speak with a representative of a VCC Inc.
institution are informed of the institutions name and are not mislead or deceived with
program for pharmacy technicians, like Ms. Eppele, and may have been aware that

Page 23
respect to the institutions identity. If an error has been made and the prospective
student has contacted the wrong institution, then the error would be clearly evident
the student.
[79]
The timing of the complaints of Ms. Eppele and Ms. Patterson is, as VCC Inc.
has noted, odd in that they appear to have surfaced after the Agency issued its
Interpretation Guideline. While this could suggest the issuance of the guideline was
driven primarily by a desire to protect competitors business interests and not the
well-being of students, I find that issue has little impact on the final resolution of the
issue before the Court and need not be determined.
[80]
On the whole, I accept VCC Inc.s position with respect to the nature, purpose
and propriety of its Keyword Advertising program. I also accept VCC Inc.s argument
that its practice of using Keyword Advertising is no different than the time-honoured
and generally accepted marketing practice of a company locating its advertisement
close to a competitors in traditional media (e.g., placing its Yellow Pages
advertisement next to or in close proximity to a competitors telephone number in
the same directory so that potential customers of that competitor discover there is
another company offering a similar product or service and that they, the consumer,
have a choice).
Summary - Conclusion
[81]
In summary, I find:
a)
VCC Inc. does not use metatags as a part of its internet advertising
strategy;
b)
The institutions that form part of VCC Inc. do not hold themselves out
in their internet advertisements as anyone other than who they are
and, in particular, they do not use the business names or trade-names
of their competitors to misidentify themselves;
at this point and corrective measures could easily be taken with no resulting harm to

c)
Page 24
The use of Keyword Advertising, including the use of competitors

names, is a advertising practice used by other institutions registered
d)
Anyone who uses Google and Yahoo to search for career training
institutions will generally find the school they are looking as well as
others. That person will have the option to investigate the school that
was the target of the initial search and/or investigate others that are
listed in the search results. Nothing compels the person to do one or
the other.
[82]
I find VCC Incs advertising program, including its use of Keyword Advertising
that incorporates the names of competitor institutions, was not designed to mislead
anyone. The two situations of what the Agency says were students who were
deceived by VCC Inc.s advertising are, in my opinion, actually examples of students
who made mistakes and it was their own actions or inactions that prompted the
errors. Had they been more cautious in their reviews of their search results they
would have realized that they were looking at a website of an institution other than
the one they were initially seeking.
[83]
In my opinion, VCC Inc.s internet advertising strategy provided Ms. Eppele
and Ms. Patterson with the opportunity to investigate and consider other institutions
besides the ones they were looking for. Not only do I find there is nothing wrong with
that, I think the option to examine a number of institutions offering similar
educational programs is a good one for the consumer.
[84]
Having considered and incorporated the principles articulated in the American
jurisprudence on Keyword Advertising as well as the Canadian cases that have dealt
with allegations of confusing or misleading advertising in the context of trademark
disputes, I am satisfied that the impugned advertising strategy of VCC Inc. is not
false, deceptive or misleading. Consequently, I find VCC Inc. has not breached
Bylaw 29.
with the Agency, not only VCC Inc.; and

The Agencys petition is dismissed with costs to VCC Inc.
G.R.J. Gaul, J.
The Honourable Mr. Justice G.R.J. Gaul
[85]
Page 25

PCTIA v. VCC - 2010

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PCTIA v. VCC - 2010

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Private Career Training Institutions Agency

IN THE MATTER OF SECTION 24 OF THE

Reasons for Judgment

Counsel for the Respondents:

Place and Date of Hearing:

2010 BCSC 765 (CanLII)

IN THE SUPREME COURT OF BRITISH COLUMBIA

Private Career Training Institutions Agency v.

is a provincial regulatory body created by the Private Career Training Institutions

Vancouver Career College (Burnaby) Inc. (VCC Inc.) provides a variety of

post-secondary educational services under various business names, including

collectively as VCC Inc.

The Agency seeks a permanent injunction restraining VCC Inc. from

contravening Bylaw 29 of the Private Career Training Institutions Bylaws (the

business names of other member institutions in connection with its internet

and mode of promoting itself is false, deceptive or misleading and therefore in

2010 BCSC 765 (CanLII)

Private Career Training Institutions Agency v.

conduct of its member institutions. In particular, s. 6(1)(m) authorizes the Agency to

which it is registered by the Agency in advertising.

2010 BCSC 765 (CanLII)

negative, then no injunction is warranted and the petition should be dismissed.

Private Career Training Institutions Agency v.

24 (1) On application by the agency, the Supreme Court may grant an

restraining a person from contravening this Act, the regulations

Keyword Advertising Generally

In order to use Keyword Advertising, a website operator will create an

2010 BCSC 765 (CanLII)

Private Career Training Institutions Agency v.

much money they want to spend in a particular advertising campaign. Those

Typically, Keyword Advertising is purchased in a campaign where keywords

In addition, keywords are not case sensitive, so if a user searches Business,

2010 BCSC 765 (CanLII)

Private Career Training Institutions Agency v.

The actual online advertisement that appears as a part of Keyword

For Google online advertisements, the title line is limited to 25 characters;

For Yahoo online advertisements, the title line is limited to 40 characters;

In the context of the present dispute between the parties, it is important to

Website operators will sometimes specify trademarks or operating names of

2010 BCSC 765 (CanLII)

the following prescribed limits:

Private Career Training Institutions Agency v.

Given the demographics and generally high level of computer literacy of

VCC Inc.s search optimization efforts include pay-per-click Keyword

VCC Inc. acknowledges that it uses Keyword Advertising extensively, bidding

on an excess of 7,000 keywords through Google and Yahoo.

sponsored links that appeared as a result of a variety of search terms:

2010 BCSC 765 (CanLII)

area of those results.

Private Career Training Institutions Agency v.

URL and description: www.VCAD.ca Career focused, lower tuition costs

2010 BCSC 765 (CanLII)

Private Career Training Institutions Agency v.

There is also evidence that other accredited institutions use Keyword

2010 BCSC 765 (CanLII)

Private Career Training Institutions Agency v.

Beginning in April 2009, the Agency received complaints from several

member institutions, including AIV, regarding VCC Inc.s use of Keyword

On June 24, 2009, as a result of a motion passed at the Boards meeting of

2010 BCSC 765 (CanLII)

Private Career Training Institutions Agency v.

provide consumer protection to students and prospective students of registered

2010 BCSC 765 (CanLII)