Notice and Notice Regime Does Not Change Law for Obtaining Norwich Orders

August 29, 2016

Unlike many countries which provide an effective "notice and take down" remedy for copyright owners whose works are wrongly posted on internet sites, Canada has implemented a "notice and notice" regime. In Voltage Pictures, LLC v. John D 2016 FC 881, the Federal Court interpreted some aspects of that regime in a reverse class action suit brought by several parties against a John D defendant.

The applicants are a number of organizations that claim copyrights in works alleged to be infringed by an unknown respondent and made application for a disclosure order in accordance with sections 41.25 and 41.26 of the Copyright Act. Section 41.25 provides the ability of a copyright owner to send a notice to the person providing connectivity to the location on the internet from which an infringement is alleged as well as the form and content of the notice. Section 41.26 requires the person receiving the notice to forward the notice to the person to whom the internet address belongs as well as requiring the retention of records that will allow the identity of the person to whom the internet address belongs to be determined. Fees can be charged for forwarding the notice but to date no regulations have done so.

The applicants were seeking a Norwich disclosure order^[1] recognized by the Federal Court of Appeal in BMG Canada Inc v D, 2005 FCA 193. Such an order would require a non-party (the ISP) to disclose the identity of an account holder. Obtaining such an order requires satisfying the following principles:

1. The applicant for a Norwich order must have a bona fide case;
2. The party against whom such an order is to be issued must have information on an issue in the proceeding;
3. An order of the Court is the only reasonable means by which the information can be obtained;
4. Fairness dictates that the information be provided prior to discovery or trial or, in the circumstances of this case, prior to certification of the proposed class proceeding; and
5. Any order made will not cause undue delay, inconvenience, or expense to the party against whom such an order is to be issued or others.

The applicants argued that the above provisions that set up the "notice and notice" regime should deny compensation to the third party (the ISP, Rogers, in the present case) for the costs involved in complying with such a request.

The Court noted that the implementation of the "notice and notice" regime had not changed the law applicable to the provision of a Norwich order.

The Court did find sufficient evidence to show a bona fide claim that unknown persons are infringing the copyright in their films and the other elements of the BMG principles were shown.

As in past cases of this kind the Court exercised caution on the disclosure of the subscriber information so that privacy rights are minimally impaired. In this case the Court ordered Rogers to disclose only the Subscriber's name and address as recorded in Rogers' records and found Rogers was entitled to a reasonable fee, in the amount of $100 plus tax, as well as costs in the motion.  The actual order included privacy safeguards following on earlier Norwich order litigation, Voltage Pictures LLC v John D, 2014 FC 161, which were previously discussed.