Federal Court Pushes Back Against Copyright Trolling

In the era of high speed internet and a culture of ubiquitous sharing, what are copyright owners to do in enforcing their claims? Or are fears of these claims being used to unduly extort unwitting consumers?

Although popular file sharing site Demonoid.me is still down, the harbours at Pirate Bay are still wide open. Revelations through Edward Snowden this week demonstrate that these file sharing sites have even been deemed to be a malicious foreign actor, simply for being a document repository. Yet a Federal court decision on Thursday in Voltage v. Does may provide some recourse without making file sharing synonymous with a national threat.

Voltage Pictures LLC, an American film company responsible for films such as The Hurt Locker, alleged approximately 2,000 people using Teksavvy had unlawfully downloaded their movies and sought a Norwich order for their subscriber identification to be provided. A Norwich order is particularly useful in obtaining the identity of parties where they are otherwise anonymous, a procedure I’ve detailed previously on Slaw here.

The court struggled with a number of competing privacy interests to the copyright asserted by the plaintiff, including freedom of expression, the use of large-scale demand letters to pressure ISPs into settlement prematurely (as has happened in other jurisdictions), and the public interest in maintaining legitimate use of file sharing for software and updates.

The plaintiff relied primarily on the 2005 Federal Court case of BMG Canada Inc. v Doe. The plaintiff was opposed by Canadian Internet Policy and Public Interest Clinic (CIPPIC), who was granted intervener status. The court ultimately granted the plaintiff’s request with a number of significant limitations, retaining a special case management in the proceeding to avoid abuses.

CIPPIC proposed that there were important privacy rights stemming from sections 7 and 8 of the Charter of Rights and Freedoms and s. 7 of PIPEDA which would weigh against an automatic disclosure of information in all cases. CIPPIC suggested that the plaintiff’s true motivation was a business model of coercing individuals who do not want to pay from a lawsuit in paying them through aggressive demand letters, a practice known as “copyright trolling.”

The court agreed that the plaintiff had met the test enunciated in BMG for establishing a bona fide claim under Rule 238 of the Federal Courts Rules:

1. that the plaintiff actually intends to bring an action for infringement of copyright based upon the information
2. there is no other improper purpose for seeking the identity of these persons

Despite the evolving nature of Norwich orders in Canada, the court upheld the bona fide threshold instead of a prima facie one.

The principles as applied from BMG to this case were summarized at para. 45:

1. a plaintiff must have a bona fide case (as described above);
2. a non-party, such as an ISP, must have information on an issue in the
   proceeding;
3. an order of the Court is the only reasonable means of obtaining the information;
4. fairness requires the information be provided prior to trial; and,
5.  any order made will not cause undue delay, inconvenience or expense to the third party or others.

The court indicated that where a valid cause of action has been established there is a presumed legal protection of intellectual property. However, on the basis of filed affidavits they did express some concerns that the plaintiff was a copyright troll. They looked at cases in other jurisdictions where Norwich type orders had been abused, and pointed to the flexibility of this mechanism to ensure that it was not used unfairly, abusively or without restriction, and concluded the following,

[137] In order to ensure the Court maintains control over the implementation of the order, this action will proceed as a specially managed action and a Case Management Judge will be appointed who will monitor, as necessary, the conduct of Voltage in its dealings with the alleged infringers.

[138] Further, in order to ensure there is no inappropriate language in any demand letter sent to the alleged infringers, the draft demand letter will be provided to the Court for review. The letter should contain a statement that no Court has yet found any recipient of the letter liable for infringement and that recipients should legal assistance. The reasonable legal costs, administrative costs and disbursements of TekSavvy in providing the information will be paid to TekSavvy prior the information being provided. The information will be limited only to the name and address of the IP addresses as set out in the schedule to the affidavit of Bany Logan which schedule is attached as Schedule A to these reasons and order. Any further directions or additions to the Order will be dealt with by the Case Management Judge. All participants on this motion and any intended defendant shall able to seek a case conference with the Case Management Judge to review issues arising in the proceeding.