Federal Court Continues Trend of Ordering Disclosure of Subscriber Information

After initiating a proposed class action lawsuit alleging copyright infringement in respect of five motion pictures (I have previously blogged on the Notice of Application), Voltage Pictures LLC (“Voltage”) has successfully persuaded the Federal Court to order the partial disclosure of subscriber information in order to proceed with certification of its “reverse” class action.

In Voltage Pictures LLC et al v. John Doe #1, 2016 FC 881, Voltage sought an order compelling Rogers Communications Inc (“Rogers”) to disclose all contact and personal information of a Rogers subscriber associated with Internet protocol addresses that were identified as having downloaded Voltage-owned copyrighted motion pictures. Rogers, similar to other internet service providers (ISPs) who have faced such disclosure requests, took no position on the disclosure of the subscriber information. The Samuelson-Glushko Canadian Internet Policy and Public Interest Clinic (CIPPIC), an intervenor, provided submissions on the type and quantity of subscriber information to be disclosed, any limits to be imposed on the use of such information, and the form of notice to be provided to the subscriber when served with the Notice of Application.

Regarding compensation, Rogers requested $100 per hour (plus HST) in order to complete the disclosure. Voltage was of the view no fee should be paid to Rogers for complying with any disclosure order.

Justice Boswell agreed that Voltage had met the test for the disclosure of subscriber information, specifically the disclosure of the subscriber’s name and address. However, he disagreed with Voltage as to why it was entitled to such a remedy, the amount of personal information that should be disclosed, and the compensation owed to Rogers for the disclosure.

Voltage requested a disclosure order “in accordance with” sections 41.25 and 41.26 of the Copyright Act. These sections are also known as Canada’s “notice and notice” regime. The Court denied Voltage’s request in this respect, finding that these provisions do not, in these circumstances, empower the Federal Court to order the disclosure and did not replace the applicable jurisprudence. Applying such case law, and citing BMG Canada Inc v Doe, 2005 FCA 193, Justice Boswell concluded that Voltage had demonstrated that they have a bona fide claim that unknown individuals had infringed the copyright in their motion pictures and had the right to the disclosure of the subscriber’s information.

However, the Court denied Voltage’s request to order the disclosure of all of the subscriber’s information, finding that the subscriber’s name and address would be sufficient for Voltage to use in the proposed class action proceeding. The Court also imposed various terms for any correspondence between Voltage and the subscriber, including that it must be stated that there has been no determination regarding the subscribers acting as the representative respondent in the class proceeding, no determination certifying a class proceeding, nor a determination that the subscriber is the person responsible for the allegedly infringing activity identified by Voltage. Moreover, Voltage is not permitted to disclose to the public the information obtained by making or issuing any statement to the media.

Prior to Voltage’s motion, it appears Rogers was willing to disclose the subscriber information upon payment of $100 per hour plus HST to cover its costs. However, Voltage was of the view that the notice-and-notice regime entitled it to receive the subscriber information at no cost, or alternatively, that the fee should be 50 cents per subscriber. Justice Boswell sided with Rogers, finding that the $100 per hour was reasonable in complying with the disclosure order. He bluntly stated “[t]he fee is what it is, and if the Applicants want information about the Subscriber they must pay the hourly fee.” Overall, the costs, according to the Court, will be approximately $113.00.

This is not Voltage’s first rodeo with respect to obtaining disclosure orders when alleging copyright infringement. In February 2014, Voltage successfully obtained the disclosure of personal information of subscribers of Chatham ISP TekSavvy Solutions Inc (Voltage Picture LLC v. John Doe, 2014 FC 161). Prior to that, in 2011, Justice Shore provided a similar order for subscribers of three ISPs, Bell Canada, Cogeco Cable Inc and Videotron GP (Voltage Pictures LLC v. Jane Doe, 2011 FC 1024). However, we have yet to see any copyright infringement proceedings commenced against any named defendants. Perhaps Voltage’s most recent order will get the film rolling in that respect.

That, however, is unlikely to occur in the near future.

Voltage has filed a Notice of Appeal against Justice Boswell’s decision. In its filing, Voltage takes issue with the majority of the decision, but appears to have two major points of contention. First, Voltage disputes the $100 hourly fee, since, in its view, the notice-and-notice regime or the evidence before the Court suggests no fee should be awarded. Second, Voltage submits that the Court erred by not applying common law principles “in conjunction with” the notice-and-notice provisions of the Copyright Act in ordering the disclosure of subscriber information. Given Voltage’s Notice of Appeal, the Federal Court of Appeal will likely have the opportunity to comment, for the first time, on notice-and-notice under Canada’s Copyright Act. If unsuccessful on appeal, one wonders if Voltage will focus its efforts on the upcoming 2017 review of the Copyright Act.

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Author: Adam Jacobs

Adam Jacobs is a partner at Hayes eLaw LLP. His practice is focused on intellectual property, privacy, media and technology law.

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