Recent decisions issued by the Federal Court of Canada (FCC) have raised uncertainty with respect to the granting of protective orders (as reported by the E-TIPS® Newsletter here and here) and whether the onerous test articulated in Sierra Club of Canada v Canada (Minister of Finance), 2002 SCC 41 (Sierra Club) for confidentiality orders (Sierra Club Test) applies to protective orders. In Canadian National Railway Company v BNSF Railway Company, 2020 FCA 45, the Federal Court of Appeal recently addressed this uncertainty and affirmed that the Sierra Club Test does not apply to protective orders.

The decision under appeal was the dismissal of a motion on consent for a protective order in the context of a patent infringement action.  In dismissing the motion, the FCC had applied the Sierra Club Test. 

In rejecting the FCC’s application of the Sierra Club Test, the FCA noted that the underlying interests in seeking protective orders and confidentiality orders are significantly different.  Protective orders address the exchange of documents privately between parties, while confidentiality orders apply to documents filed with the court, which engages the public interest in open courts.

Instead, the FCA found that the appropriate test to be satisfied is the “AB Hassle Test,” which requires:

  1. that the information subject to the confidentiality order has been treated by the disclosing party as confidential at all relevant times; and
  2. the disclosing party’s proprietary, commercial and scientific interests could reasonably be harmed by the disclosure of the information.

The FCA also addressed hybrid orders, which encompass both the confidential exchange of information between parties (i.e. a protective order) and confidential information filed with the court (i.e. a confidentiality order).  The test for granting a hybrid order is the same as for a protective order.  However, when a party wishes to have the court treat documents covered by the hybrid order as confidential and sealed from the public record, it must forthwith bring a motion pursuant to Rule 151 of the Federal Courts Rules and meet the Sierra Club Test. 

Summary By: Matthew Frontini


20 02 26

Disclaimer: This Newsletter is intended to provide readers with general information on legal developments in the areas of e-commerce, information technology and intellectual property. It is not intended to be a complete statement of the law, nor is it intended to provide legal advice. No person should act or rely upon the information contained in this newsletter without seeking legal advice.

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