Since the rise of the Internet, intellectual property owners have struggled with issues relating to the protection of their rights in cyberspace. It is trite law that almost all web sites, to varying degrees, are protected by copyright law. Moreover, various types of contractual relationships may be formed between Internet users and web site owners, by virtue of web-wrap or click-wrap licenses. However, due to the nature of the Internet and privacy issues between Internet Service Providers (ISPs) and their subscribers, a web site owner may not have access to information that identifies people who have made unauthorized copies or who have violated the terms of a user agreement. Substantive rights cannot be protected or enforced when a wrongdoer cannot be identified.
Technological solutions to determine the true identity of Internet users are not always practical, or even available. To the extent that technological solutions (e.g. authentication protocols) may be available, the Internet user may counteract them by, for example, using chains of aliases or switching IP addresses to stay ahead of a web site owner’s blocking efforts. So how does a web site owner stop unidentified or unauthorized persons from attacking his or her web site? Rather than seeking relief through an Anton Piller-type order, or a "John Doe" Order, which may be costly and not timely enough to identify these web user(s), the best first step may be to obtain a "bill of discovery".
A bill of discovery permits an aggrieved person (e.g. a web site owner) to compel an innocent person (e.g. an ISP) who becomes involved in the wrongful acts of another, to assist the aggrieved person by providing information about the wrongdoer. Fulfillment of this duty may be compelled through a free standing court application or action against the innocent party by way of a bill of discovery.
Bills of discovery may also be useful in a wide variety of other intellectual property contexts.
In summary, any time that it is impossible to identify an IP infringer, but an innocent third party with knowledge is available, there may be judicial means to compel cooperation and identify the wrongdoer.
Franc Boltezar is an associate with Smart & Biggar / Fetherstonhaugh in Vancouver.
Smart & Biggar is Canada’s largest firm practising exclusively in intellectual property and technology law. With offices in Ottawa, Toronto, Montreal, Vancouver and Edmonton, we offer a full range of intellectual property and technology law services. Related to Fetherstonhaugh through common partners, offices and personnel, we have a national and international reputation for the quality of our work and the calibre of our professionals.
The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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