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:
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.
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+
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
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
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.
1. BMG Canada Inc v. Doe, 2005 FCA
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