Canada: Finding The Class Of John And Jane – Norwich Orders And The "Reverse" Class Action

Last Updated: September 23 2016
Article by Patrick J. Cotter and Nathan Fan

In the context of today's Internet technology, the infringement of copyrighted works has become simplified and wide-spread, with infringers emboldened by the ability to keep their identities largely private. Due to this veil of anonymity, copyright owners have had to find creative ways of enforcing their rights against the John and Jane Does of the Internet.

Notice and Notice

In Canada, the Copyright Act provides for a "notice and notice" regime for alleged infringers hiding behind an IP address. Under this regime, there is a mechanism for copyright owners to send notices of alleged copyright infringement to an Internet Service Provider (ISP) to be forwarded on to their subscribers (i.e. the alleged infringers) based upon their subscribers' IP addresses as identified by the copyright owner [see s.41.25 of the Copyright Act]. The ISP is obligated to forward the copyright owner's notice of alleged infringement to the subscriber/alleged infringer. While the identities of the subscribers/alleged infringers (i.e. name, address, etc.) are kept private with the ISP and are not disclosed to the copyright owner, the regime requires the ISP to retain records of the subscriber's identity for a limited period of time in the case that the plaintiff commences legal action against the subscriber [see s. 41.26 of the Copyright Act].

Norwich Order

Aside from the "notice and notice" regime, copyright owners may also make use of "Norwich" disclosure orders. Norwich orders allow a plaintiff to obtain information from third parties necessary for the plaintiff to advance the claim against the defendant. Norwich orders have been successfully obtained to compel ISPs to disclose the identities of certain of its subscribers against whom a prospective plaintiff has a bona fide claim.

For example, Voltage Pictures (a film production company known for films such as The Hurt Locker) commenced an action in the Federal Court in 2012 (T-2058-12), alleging copyright infringement against John and Jane Does who had, without authorization, reproduced and distributed copies of The Hurt Locker film over the Internet through BitTorrent and other peer-to-peer networks. Voltage Pictures had conducted a forensic investigation which led to the identification of the IP addresses of the infringers who were subscribers of TekSavvy's ISP services, but did not have the actual identities of the infringers beyond the IP addresses. Voltage Pictures successfully brought a motion for a Norwich order compelling TekSavvy to disclose the names and addresses of some 2,000 subscribers alleged to have infringed Voltage Pictures' copyright.

Based on the Federal Court of Appeal's decision in BMG Canada Inc. v. John Doe, 2005 FCA 193, [2005] 4 F.C.R. 81, the Federal Court hearing Voltage Pictures' motion found that Voltage Picture had met all the requirements for the requested Norwich Order, namely:

  1. that Voltage Pictures had a bona fide case;
  2. that TekSavvy had information on an issue in the proceeding;
  3. that the order of the Court was the only reasonable means of obtaining the information;
  4. that fairness required the information be provided prior to trial; and
  5. any order made would not cause undue delay, inconvenience or expense to the TekSavvy or others.

The Federal Court also awarded reasonable legal costs, administrative costs and disbursements of TekSavvy in complying with the Norwich order (2014 FC 161). TekSavvy's costs were subsequently assessed at over $20,000 (2015 FC 1364).

The case involving TekSavvy is an example of the more traditional approach of commencing an action against unidentified John and Jane Does, obtaining the identities of the infringers via a Norwich Order, and subsequently amending the claim to name the identified infringers.

"Reverse" Class Action

Voltage Pictures has recently started another copyright enforcement campaign, but this time employing a more creative approach by filing a Notice of Application and asserting a "reverse" class action against the John and Jane Does (T-662-16).

In a "reverse" class action, a plaintiff seeks to advance a claim against one representative defendant on behalf of a class of defendants. The Notice of Application filed by Voltage Pictures asserts a copyright infringement claim against the class of John and Jane Does and seeks to have the class of defendants certified on the basis of a representative – John Doe #1.

"Reverse" class actions are rare and have only been advanced a few times in Canada. Under the Federal Court Rules, Rule 334.14(2) provides that:

A party to an action or an application against two or more defendants or respondents may, at any time, bring a motion for the certification of the proceeding as a class proceeding and for the appointment of a representative defendant or respondent.

Voltage Pictures recently brought a motion for a Norwich order compelling Rogers Communications Inc. (in its capacity as an ISP) to disclose the identity of the representative defendant, John Doe #1. The Federal Court assessed Voltage Pictures' motion under the same test set out in the FCA's decision in BMG Canada and concluded that Voltage Pictures met the requirements for a Norwich order and accordingly ordered Rogers to disclose the name and address of John Doe #1 (2016 FC 881). The Federal Court also awarded Rogers its legal costs ($500) plus the administrative costs of obtaining the identity of John Doe #1 (an hourly fee of $100 for the time spent in assembling and providing the information).

The identity of John Doe #1 (IP Address was disclosed to Voltage Pictures on August 8, 2016.

The issue of certifying the class based on the representative defendant John Doe #1 has yet to be determined. Voltage Pictures will still have to meet the stringent requirements for class certification, including the requirement to establish that the proposed members of the class have sufficient commonality to sustain a class certification (see Rule 334.16 of the Federal Courts Rules). If successful in obtaining certification, this proceeding could represent the basis for a more cost-effective approach to pursuing enforcement of intellectual property rights against online infringers in Canada.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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