Canada: Lifting The Internet Veil In P2P Copyright Infringement Actions

With the debate over "patent trolls" raging in the United States, a different type of "troll" was discussed in a recent decision from the Federal Court of Canada: "copyright trolls."

The plaintiff in Voltage Pictures LLC v. John Doe and Jane Doe, 2014 FC 161 is a film production company that produced, among other films, The Hurt Locker. It is seeking damages for copyright infringement against unknown defendants for alleged peer-to-peer ("P2P") file-sharing.

In 2012, Voltage engaged Canipre Inc. ("Canipre") to investigate whether any of Voltage's cinematographic works were being copied and distributed in Canada over P2P networks using BitTorrent. Canipre was able to identify certain information, including IP addresses, of internet subscribers who had allegedly infringed Voltage's works. Canipre identified the IP addresses of over 2,000 subscribers from one internet service provider ("ISP"), TekSavvy Solutions Inc. ("TekSavvy").

The problem Voltage faced was that this information did not include the identity of the alleged infringers. To obtain this information, Voltage filed a motion asking the Federal Court to order TekSavvy to disclose the names and addresses of these 2,000+ TekSavvy subscribers.

The Federal Court ordered TekSavvy to produce the requested information. However, the Court did not make it that simple for Voltage. In particular, thirteen paragraphs in the Court's Order explicitly set out requirements for both TekSavvy and Voltage.

The Struggle: Protecting IP Rights versus Preventing Abuse

The tone of the decision was set at the beginning of the Federal Court's reasons where Prothonotary Aalto quoted a passage from a United States decision that warned against "copyright trolls." Prothonotary Aalto was faced with the issue of allowing a copyright holder to protect its copyright rights without permitting abuse or unrestrained enforcement of those rights. This issue was of particular concern given Prothonotary Aalto's finding that "Voltage has been engaged in litigation which may have an improper purpose."

Ultimately, Prothonotary Aalto decided to not let individual infringers hide behind internet anonymity. Instead, and to protect the individuals from abuse, Prothonotary Aalto crafted a detailed Order with several safeguards to prevent abuse of copyright.

Bona Fide versus Prima Facie Standard in Canada

The Canadian Internet Policy and Public Interest Clinic ("CIPPIC") challenged the legal standard upon which the order sought, known as a Norwich order, can be granted. While the Federal Court of Appeal in BMG¹ held that the moving party need only establish a bone fide case, CIPPIC alleged that recent jurisprudence shifted the standard to a prima facie case.

Prothonotary Aalto rejected this assertion. As noted in BMG, requiring the moving party in cases such as this one to establish a prima facie case would effectively strip it of a remedy. At early stages in these types of cases, the plaintiff does not know the identity of the defendants nor the details of what precisely was done by each of them. The Norwich order is needed to obtain this information.

Safeguards in ISP Norwich Orders

Ultimately, TekSavvy was ordered to provide the names and addresses of subscribers associated with specified IP addresses. It was ordered to do so only after Voltage had paid TekSavvy's reasonable costs incurred in abiding by the Order.

The Federal Court also imposed specific restrictions on Voltage as to how it could engage the identified subscribers. Any correspondence sent to these subscribers would need to attach the Court's Order and clearly state in bold letters that no Court has determined whether the subscriber has infringed or is liable for payment of damages. Further, the draft correspondence, before being sent to subscribers, will be discussed at a case conference with the parties to review and approve the contents of the letter.

Prothonotary Aalto provided a practical suggestion for future plaintiffs seeking similar orders: on the motion, submit a draft demand letter to subscribers or a draft Order that demonstrates the safeguards in place to prevent against abuse. Courts will be wary of abuse of intellectual property rights where the plaintiff is seeking the identity of hundreds or thousands of individuals. Recognizing and addressing this concern upfront could benefit parties seeking similar orders in the future.

Footnote

1. BMG Canada Inc v. Doe, 2005 FCA 193.

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