In Voltage Pictures LLC v. John Doe and Jane Doe, the court grappled with a motion for discovery of a non-party to the litigation. This type of order, often referred to in Canada as an equitable bill of discovery or a Norwich order, allows the party seeking the order to gain pre-litigation discovery from a party that may otherwise be unavailable for discovery. Oftentimes, the third party is not opposed to providing the information requested, but will only agree to do so if compelled by law; hence the need to obtain a Norwich order.

In the Voltage case, the plaintiff sought disclosure from an Internet service provider of contact names and IP addresses for 2,000 individual Internet users who had allegedly committed copyright infringement by downloading movies through peer-to-peer networks. The plaintiff argued that it needed this information in order to pursue claims against the users.

In granting the order requested, the court canvassed the case law with respect to such orders and took steps to balance two competing rights: copyright and privacy. In this case, the privacy rights of the Internet users had to be balanced against the legitimate interest of a copyright owner seeking to enforce its rights.

The leading authority in the Federal Court governing Norwich orders is the decision of the Federal Court of Appeal in BMG Canada Inc. v. John Doe. In that case, the Court of Appeal confirmed that such an order is an extraordinary order and is discretionary. The Court of Appeal also confirmed the framework for consideration of the issues when dealing with a request for such an order and held that a party seeking a Norwich order must satisfy the following criteria:

  • a plaintiff must have a bona fide case;
  • the non-party must have information on an issue in the proceeding;
  • an order of the court is the only reasonable means of obtaining the information;
  • fairness requires that the information be provided prior to trial; and 
  • any order made will not cause undue delay, inconvenience or expense to the third party.

In Voltage, the court spent substantial time considering whether a plaintiff must have a bona fide claim or whether the higher standard of a prima facie case was preferable. Establishing a bona fide claim requires a plaintiff to show that it really does intend to pursue an action based on the information sought by the order and there is no improper purpose for seeking the information sought by the order. The prima facie standard was argued to be preferable as a means of balancing the privacy rights of the individual Internet user against the desire of the plaintiff to identify an alleged infringer and to protect its intellectual property rights.

The court saw no jurisprudential basis for shifting away from the bona fide standard. The court noted that privacy consideration should not be a shield for wrongdoing and must yield to an injured party's request for information from non-parties. This response is in line with the Ontario Court of Appeal's recent decision in 1654776 Ontario Limited v. Stewart, where the court rejected the prima facie standard after finding that the five-step Norwich analysis (similar to the BMG criteria referred to above) already incorporates the balancing of competing interests.

The court in Voltage did concede that, when making any Norwich order, a court must ensure that privacy rights are invaded in the most minimal way possible. In that respect, the court canvassed case law, including cases from the U.S. and the U.K., and identified a non-exhaustive list of considerations for imposing safeguards on the disclosure, including:

  • the moving party must demonstrate a bona fide case;
  • putting safeguards in place so that alleged infringers receiving any "demand" letter from a party obtaining a Norwich order not be intimidated into making a payment without the benefit of understanding their legal rights and obligations;
  • when issuing a Norwich order, the court may retain authority to ensure that it is not abused by the party obtaining it and can impose terms on how its provisions are carried out;
  • the party enforcing the Norwich order should pay the legal costs and disbursements of the innocent third party;
  • specific warnings regarding the obtaining of legal advice or the like should be included in any correspondence to individuals who are identified by the Norwich order;
  • limiting the information provided by the third party by releasing only the name and residential address but not telephone numbers or email addresses;
  • ensuring there is a mechanism for the court to monitor the implementation of the Norwich order;
  • ensuring that the information that is released remains confidential and not disclosed to the public and be used only in connection with the action;
  • requiring the party obtaining the order to provide a copy of any proposed "demand" letter to all parties on the motion and to the court prior to such letter being sent to the alleged infringers;
  • the court should reserve the right to order amendments to the "demand" letter in the event it contain inappropriate statements;
  • letters sent to individuals whose names are revealed pursuant to the court order must make clear that the fact that an order for disclosure has been made does not mean that the court has considered the merits of the allegations of infringement against the recipient and made any finding of liability;
  • any "demand" letter should stipulate that the person receiving the letter may not be the person who was responsible for the infringing acts;
  • a copy of the court order or the entire decision should be included with any letter sent to an alleged infringer; and
  • the court should ensure that the remedy granted is proportional.

The Voltage case illustrates the Federal Court's latest thinking on the proper balance to strike between copyright and privacy interests at a time when Internet users have unparalleled access to proprietary content. Although Voltage dealt with allegations of copyright infringement, similar privacy issues arise in other cases where rights holders, or aggrieved parties, seek disclosure of information from Internet service providers or other parties in order to commence claims against the alleged wrongdoers. The list of considerations established by the court can serve as a useful starting point with respect to issues a potential moving party should consider when deciding to seek a Norwich order.

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.