The Federal Court granted an order compelling an internet service provider (ISP) to divulge the names and addresses of some 2000 account holders implicated in alleged copyright infringement over peer-to-peer (P2P) networks. This type of order is often associated with “copyright trolls” in other jurisdictions. However, in granting the order, Prothonotary Kevin Aalto attached conditions meant to curb potential abuses associated with the practice.
Voltage Pictures LLC is a Los Angeles-based studio engaged in the production, finance, and international sales of many popular movies, including the Academy Award-winning film “The Hurt Locker” (2008). In 2012, Voltage retained anti-piracy firm Canipre to determine if any of Voltage’s works were being shared via P2P networks in Canada, such as BitTorrent. An investigation determined that Voltage’s works were being seeded by users associated with around 2000 IP addresses.
Voltage, in response, sought a so-called Norwich Order requiring the ISP TekSavvy Solutions Inc. to provide the names and addresses of account holders associated with the internet protocol (IP) addresses in question. While TekSavvy took no position on the motion, the Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic (CIPPIC) was granted intervenor status to oppose the order, arguing that privacy considerations and the interests of justice should militate against ordering the ISP to divulge user information.
The Troll Toll – Abuse of Process and the Federal Court
“Copyright trolls” use the threat of litigation to effect quick settlements. These organizations send threatening and often misleading letters to individuals suspected of infringement, implying that liability is a foregone conclusion and demanding relatively small settlement amounts, usually low enough that retaining counsel to mount a full defence makes no economic sense. Frequently, such organizations threaten liability based on the infringement of rights related to pornographic movies – adding a layer of embarrassment to the demand and further extorting quick (and quiet) settlements from individuals.
To be clear, the plaintiff in Voltage Pictures LLC v John Doe and Jane Doe does not exhibit all of the characteristics of a typical troll. The plaintiff is engaged in a legitimate business, and does not depend on quick settlements as its primary means of generating profit. Further, Voltage produces critically acclaimed movies – not the pornographic content frequently associated with such trolls. However, the order sought by Voltage is so strongly associated with troll-like practices that, in my opinion, the spectre of the copyright troll must have heavily influenced the reasoning behind the order and the conditions under which it was granted. The Federal Court, while aware of the need to facilitate the protection of copyright, also recognizes the need to balance that interest with the prevention of the abuse of its processes.
Standards for Granting the Order – A Bona Fide Case
The specific order sought by Voltage was an equitable bill of discovery, also known in Canada as a Norwich Order after the decision of the House of Lords in Norwich Pharmacal Co. v Customs and Excise Commissioners. The order was described in BMG Canada Inc v Doe as an “ancient” form of pre-action discovery which permits a court, through its equitable jurisdiction, “to order discovery of a person against whom the applicant…has no cause of action and who is not a party to the contemplated litigation.” These orders are meant to facilitate the discovery process where some third-party has relevant information not otherwise available to a plaintiff.
The intervenor CIPPIC strongly emphasized the need to protect the privacy of users, and therefore argued that the applicant had to satisfy a higher standard of a prima facie case before the Court could justify the disclosure of users’ personal information. The Court disagreed, reviewing cases from other jurisdictions and concluding that even in the US, where a nominal prima facie standard was required, it was unclear if that standard was maintained in practice.
Slaying the Troll?
Prothonotary Aalto’s decision contains a review of case law from the US and the UK, which notes the shortcomings of judicial practice in jurisdictions where open-ended orders allowed the applicants to use the orders unfairly, by sending misleading letters to persons suspected of infringement. These letters, among other things, suggest that liability is a foregone conclusion and extort settlements from the recipients with no intention of pursuing further legal action on the part of the applicant.
In order to avoid similar abuses, this decision holds that courts should balance the privacy rights of potentially innocent users against the right of copyright holders to enforce their rights. To maintain this balance, where evidence suggests that a copyright holder is motivated by an improper purpose, the Court ought to subject the order to more stringent conditions. In some cases, where there is compelling evidence of improper motive, the Court may deny the motion entirely.
In this instance, the Court held that Voltage had met the lower bona fide standard, and allowed the order – however, it made the order subject to certain conditions meant to curb potentially abusive practices, including:
- making the order subject to oversight by a Case Management Judge;
- ensuring that the letter contains no inappropriate language by subjecting a draft demand letter to review by the Court;
- requiring a statement in the letter that liability for infringement has not yet been established and recommending that recipients seek legal assistance;
- requiring reimbursement of the reasonable costs and disbursements of TekSavvy incurred in providing the necessary information; and
- limiting the information provided to the name and address of the IP addresses implicated in file sharing of the protected works (and not the personal phone numbers or email addresses of such individuals).
Attaching similar conditions to Norwich Orders may well render large-scale actions against individual non-commercial infringers economically unfeasible. In any case, it will be interesting to see how the enforcement tactics of rights-holders develops over the next few years, in the context of a Court cognizant both of the extent of internet piracy and the increasing importance of preserving online privacy.
David Bowden is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.