The Federal Court has recently issued an order compelling Internet service providers (ISPs) to block their customers from accessing pirate subscription streaming sites operated by anonymous defendants. Although Bell Media Inc. v. GoldTV.Biz, 2019 FC 1432 is the first decision of its kind in Canada, the Court held that site-blocking orders fall squarely within its powers to grant injunctive relief. More blocking orders should be expected to prevent online piracy.
Earlier this summer, the Court issued interim and interlocutory injunctions against anonymous defendants who illegally aired the plaintiffs' programming content from unauthorized subscription streaming sites. The infringement continued in spite of the injunction.
The plaintiffs then filed a motion for a site-blocking order against 11 third party ISPs. One, TekSavvy Solutions Inc. (TekSavvy), opposed the motion. Four (each affiliated with one of the plaintiffs) consented to the motion. The others either took no position or only quibbled with the terms of the blocking order.
The Court held that it is empowered to issue site-blocking orders, pursuant to section 44 of the Federal Courts Act, when it is just and equitable in the circumstances.
Starting with the well-established three-part test for an interlocutory injunction (serious issue, irreparable harm and balance of convenience) the Court then took guidance from United Kingdom jurisprudence on site-blocking orders (Cartier International AG v. British Sky Broadcasting Ltd.,  EWCA Civ 658; Cartier International AG v. British Sky Broadcasting plc,  UKSC 28). Ultimately, the Court incorporated the following eight non-determinative factors into the applicable test for an interlocutory site-blocking order:
- Necessity (i.e., the extent to which the order is necessary to protect the plaintiffs' rights);
- Effectiveness (i.e., whether the order will render infringing activities more difficult and discourage access to the infringing services);
- Dissuasiveness (i.e., whether third parties not currently accessing the infringing services will be dissuaded from doing so);
- Complexity and Cost (i.e., whether the complexity and cost of implementing the order weigh in favour or against issuance of the order);
- Barriers to legitimate use or trade (i.e., whether the order will unduly prevent ISP's customers from accessing lawful content);
- Fairness (i.e., whether the order strikes a fair balance between fundamental rights of the parties, the third parties and the general public);
- Substitution (i.e., the extent to which the blocked websites may be replaced or substituted for another infringing website); and
- Safeguards (i.e., whether the order includes measures that safeguard against abuse).While the Court agreed with TekSavvy's argument that, in principle, any financial loss suffered by the plaintiffs was compensable in damages, it nonetheless decided that the plaintiffs would suffer irreparable harm. The Court made two key points in that regard. First, it stressed that the harm arose in a context where there was a strong prima facie case of an ongoing copyright infringement by the anonymous defendants. Second, it noted the lack of an agreed upon methodology for assessing the impact of the defendants' services on consumer behavior and the resulting financial consequences to the plaintiffs.
- On the last prong of the test, and in particular the question of the effectiveness of site-blocking orders, the Court preferred the plaintiffs' evidence and held that circumvention options were available but impractical to implement.
- Applying the tripartite injunction test, the Court noted that there was no dispute on the first prong of the test (i.e., there was clearly a serious issue).
This landmark decision suggests that securing a site-blocking order against Internet middlemen is available in Canada to counteract ongoing online infringement of intellectual property rights by anonymous defendants. There may be further refinements of the Court's approach since TekSavvy appealed the decision, arguing that the Court reached the wrong conclusion under Canadian law and relied too heavily on UK precedents. A copy of TekSavvy's Notice of Appeal filed on November 25, 2019 can be found here.
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