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Claims Against ISPs Under the Notice and Notice Regime

Canada uniquely provides a notice and notice regime by which copyright owners can require an ISP to forward notices of alleged infringement to a suspected typically anonymous internet user claimed to be infringing the owner’s copyright.

Courts describe one of the purposes of the notice-and-notice regime is “to provide copyright holders the information they need in order to bring infringement actions against suspected violators, who will usually be Internet users whose identities are unknown to the copyright holders, but known to the respective ISPs”.[1]

The Supreme Court has also described a purpose of the notice and notice regime was “to deter online copyright infringement and to balance the rights of the various players – copyright holders, internet users, and ISPs “.[2]

The “notice and notice” regime has been described as having “both a deterrent and an enforcement objective in respect of copyright violations”.[3]

Under the notice and notice regime “the ISPs themselves are insulated from claims of infringement; instead, they have a duty to promptly forward notices from copyright holders, inform claimants that the notices have been relayed (or explain why they could not be), and retain accurate records of identifying information for at least six months”.[4]

The effect of the notice and notice regime is that “ISPs have a duty to correlate IP addresses with subscribers’ identities and to verify the accuracy of that linkage”.[5]

The duties of the ISP under the notice and notice regime are enforced by monetary penalties ranging from $5,000 to $10,000.[6]

Courts have allowed a damages claim to proceed against an ISP for allegedly not forwarding notice or keeping proper records of subscribers by way of a motion under the notice and notice regime where such a motion was combined with a disclosure order for identity of the internet users.[7]

However, where a plaintiff merely seeks a claim of damages for violation of its duties under the notice and notice regime and does not combine the motion with a request for a disclosure order the Federal Court has found that a motion is not the proper procedure to claim such damages. Rather, the plaintiff should commence an action against the ISP if it wishes to claim such damages.[8]

Generally speaking, matters of liability and damages can be determined only by way of an action.[9] A claim for damages for non-compliance with the notice and notice regime is not identified as a proceeding that can be determined in a summary way by application or action.[10]

The procedure for advancing a claim under the notice and notice regime is not specified in the Copyright Act.[11] The general rule that liability and damages should be decided by way of an action, applies to allegations of an ISPs non-compliance with its duties under the notice and notice regime.[12]

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[1] See TBV Productions, LLC v. Doe, 2021 FC 181 at para 7.

[2] See Rogers Communications Inc v Voltage Pictures LLC, 2018 SCC 38 at para 22; ME2 Productions Inc v Doe, 2019 FC 214; TBV Productions, LLC v. Doe, 2021 FC 181 at para 13.

[3] See TBV Productions, LLC v. Doe, 2021 FC 181 at para 8.

[4] See s 41.26(1)(a),(b), Copyright Act. See also TBV Productions, LLC v. Doe, 2021 FC 181 at para 8.

[5] See Rogers Communications Inc v Voltage Pictures LLC, 2018 SCC 38 at para 31.

[6] See s 41.26(3), Copyright Act.

[7] See ME2 Productions Inc v Doe, 2019 FC 214 where the plaintiff sought both a Norwich Order and an award of statutory damages within the same motion. In that case the alleged failures by the ISPs came to light within the plaintiff’s motion for disclosure, justifying the pursuit of damages within the same proceeding. See ME2 Productions Inc v Doe, 2019 FC 214 at para 139.

[8] See TBV Productions, LLC v. Doe, 2021 FC 181 at para 20. In that case the plaintiff did not allege that the ISPs failed to comply with the notice-and-notice regime in respect of the range of IP addresses that were the subject of the disclosure motion. Instead, the issue relates to a separate range of IP addresses assigned to suspected infringers who never received proper notices from the ISPs. The ISPs offer reasons for that failure, such as that the notices TBV sent them were duplicates, that they did not actually have email addresses for the suspected infringers, and that some of the suspected infringers were not parties to the plaintiff’s infringement action and, therefore, had not received notices. In that case the issue of the ISPs’ alleged failure to comply with the notice-and-notice regime was not connected to any issue of disclosure. See TBV Productions, LLC v. Doe, 2021 FC 181 at para 24.

[9] See TMR Energy Ltd v State Property Fund of Ukraine, 2005 FCA 28 at para 40; TBV Productions, LLC v. Doe, 2021 FC 181 at para 26.

[10] See s 34(4), Copyright Act.

[11] See see s 41.26(3), Copyright Act.

[12] See TBV Productions, LLC v. Doe, 2021 FC 181 at para 29 where the Court noted that it would be unfair “to allow a copyright holder to expose entities who are not even parties to an infringement action to substantial damages without their having recourse to the usual procedural protections available to defendants to an action, particularly the exchange of pleadings, an opportunity for discovery, and the presentation of evidence and testimony at trial. Some ISPs receive hundreds of thousands of notices from copyright holders every month. It would be unfair to permit substantial damage claims against them for alleged failures under the scheme to be prosecuted other than through the usual process of an action. The potential damages to which ISPs are liable under the regime will usually exceed those for which the actual infringers will be exposed. It makes little sense, therefore, not to afford ISPs the same procedural rights.”

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