Date: 20110829
Docket: T-1373-11
Citation: 2011 FC 1024
[UNREVISED ENGLISH CERTIFIED
TRANSLATION]
Montréal, Quebec,
August 29, 2011
PRESENT: The
Honourable Mr. Justice Shore
BETWEEN:
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VOLTAGES PICTURES LLC
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Plaintiff
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and
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JANE DOE and JOHN DOE
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Defendants
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REASONS
FOR JUDGMENT AND JUDGMENT
I. Preliminary
[1]
A
copyright infringement gives rise to extraordinary measures in order to find the
parties guilty of that infringement.
II. Introduction
[2]
In
BMG Canada Inc. v. John Doe, 2005 FCA 193, [2005] 4 F.C.R. 81, the
Federal Court of Appeal confirmed the following:
[42] ... in cases where plaintiffs show that they
have a bona fide claim that unknown persons are infringing their
copyright, they have a right to have the identity revealed for the purpose of
bringing action. ...
[3]
The
Court accepts the plaintiff’s position in support of its motion as follows:
(i) an
order allowing for a written examination for discovery of Bell Canada, Cogeco Cable
Inc. and Videotron GP to be held so that they identify the names and addresses connected
to their customer accounts associated with the IP addresses at the times specified
in Annex A of the Statement of Claim filed in this record; and
(ii) an
order requiring Bell Canada, Cogeco Cable Inc. and Videotron GP to disclose to
Voltage Pictures LLC the names and addresses related to their customer accounts
associated with the IP addresses at the times specified in Annex A of the
Statement of Claim filed in this record.
[4]
Voltage
Pictures LLC is the owner of the copyright on the film Hurt Locker. The defendants
copied and distributed this film over the internet without the authorization of
Voltage Pictures LLC.
[5]
Voltage
Pictures LLC has identified the IP addresses used by the defendants, but only
their internet service providers can identify them more precisely.
[6]
Voltage
Pictures LLC is seeking leave to conduct a written examination for discovery of
the internet service providers so that they disclose the names and addresses of
the customers corresponding to the IP addresses already obtained. Once these
customers have been identified, Voltage Pictures LLC can send formal notices
and, where applicable, add these persons as defendants to this action.
III. Facts
[7]
The
defendants downloaded, copied and distributed the film Hurt Locker
through peer-to-peer networks on the internet, without the authorization of Voltage
Pictures LLC. They did so anonymously; they can be identified only by their IP
addresses (Affidavit of Daniel Arheidt, sworn on August 24, 2011, at paras.
23-25).
[8]
An
IP address is merely a series of numbers, as appears from the table attached as
Annex A to the Statement of Claim dated June 20, 2011.
[9]
The
IP addresses in question belong to Bell Canada, Cogeco Cable Inc. and Videotron
GP (internet service providers) and are used by customers when they access the internet.
The internet service providers record the use of their IP addresses and can
identify who has used an IP address at a specific time and date (Affidavit of Daniel
Arheidt at para 23).
[10]
Voltage
Pictures LLC must therefore call upon the internet service providers to obtain
the names and addresses corresponding to the IP addresses that it has already
obtained by consulting public sources.
[11]
Without
this information, Voltage Pictures LLC cannot identify those persons who have infringed
its copyright and will be deprived of its right to bring an action against them.
IV. Analysis
Subsection 7(3) of the Personal
Information Protection and Electronic Documents Act, S.C. 2000, c. 5
[12]
Voltage
Pictures LLC is asking the internet service providers to disclose the names and
addresses of some of their customers who have allegedly infringed its
copyright.
[13]
Subsection
7(3) of the Personal Information Protection and Electronic Documents Act,
S.C. 2000, c. 5, allows for the disclosure of personal information on a court
order:
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7.
(3) For the
purpose of clause 4.3 of Schedule 1, and despite the note that accompanies
that clause, an organization may disclose personal information without the
knowledge or consent of the individual only if the disclosure is
…
(c) required to comply with a
subpoena or warrant issued or an order made by a court, person or body with
jurisdiction to compel the production of information, or to comply with rules
of court relating to the production of records;
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7.
(3) Pour
l’application de l’article 4.3 de l’annexe 1 et malgré la note afférente,
l’organisation ne peut communiquer de renseignement personnel à l’insu de
l’intéressé et sans son consentement que dans les cas suivants :
[...]
c) elle est exigée par
assignation, mandat ou ordonnance d’un tribunal, d’une personne ou d’un
organisme ayant le pouvoir de contraindre à la production de renseignements
ou exigée par des règles de procédure se rapportant à la production de
documents;
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[14]
According
to the Federal Court of Appeal, a written examination for discovery of the
internet service providers is appropriate where their customers have infringed
the plaintiff’s copyright:
[25] However, the appellants argued that the
main issue on the motion was the identity of each person who is committing
infringement of the appellants' copyrights. I agree and find that because this
issue inevitably falls within the words in subsection 238(1) of the Rules as being
"an issue in the action," rule 238 is broad enough to permit
discovery in cases such as this.
...
[41] Modern technology such as the Internet
has provided extraordinary benefits for society, which include faster and more
efficient means of communication to wider audiences. This technology must not
be allowed to obliterate those personal property rights which society has
deemed important. Although privacy concerns must also be considered, it seems
to me that they must yield to public concerns for the protection of
intellectual property rights in situations where infringement threatens to
erode those rights.
[42] Thus, in my view, in cases where
plaintiffs show that they have a bona fide claim that unknown persons
are infringing their copyright, they have a right to have the identity revealed
for the purpose of bringing action. However, caution must be exercised by the
courts in ordering such disclosure, to make sure that privacy rights are
invaded in the most minimal way.
(BMG,
above)
[15]
These
principles also apply to the case at bar.
Rule 238 of the Federal
Courts Rules, SOR/98-106
[16]
To
obtain the name and address of a customer of an internet service provider,
plaintiffs must prove that they have a bona fide claim against that
customer and that they meet the criteria of Rule 238 of the Federal Courts
Rules (BMG, above, at paras. 33 and 34).
[17]
Voltage
Pictures LLC has a bona fide claim against the defendants: it has
brought an action against them for having infringed its copyright when they
copied and publicly distributed the film Hurt Locker.
[18]
Rule
238 of the Federal Courts Rules allows for the holding of an examination
for discovery of a third party where the third party has relevant information
on an issue in the action:
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238. (1) A party to an
action may bring a motion for leave to examine for discovery any person not a
party to the action, other than an expert witness for a party, who might have
information on an issue in the action.
…
(3) The Court may, on a motion under
subsection (1), grant leave to examine a person and determine the time and
manner of conducting the examination, if it is satisfied that
(a) the person may have
information on an issue in the action;
(b) the party has been unable to
obtain the information informally from the person or from another source by
any other reasonable means;
(c) it would be unfair not to
allow the party an opportunity to question the person before trial; and
(d) the questioning will not
cause undue delay, inconvenience or expense to the person or to the other
parties.
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238. (1) Une partie à une
action peut, par voie de requête, demander l’autorisation de procéder à
l’interrogatoire préalable d’une personne qui n’est pas une partie, autre
qu’un témoin expert d’une partie, qui pourrait posséder des renseignements
sur une question litigieuse soulevée dans l’action.
[…]
(3) Par suite de la requête visée au
paragraphe (1), la
Cour peut
autoriser la partie à interroger une personne et fixer la date et l’heure de
l’interrogatoire et la façon de procéder, si elle est convaincue, à la fois :
a) que la personne peut posséder des
renseignements sur une question litigieuse soulevée dans l’action;
b) que la partie n’a pu obtenir ces
renseignements de la personne de façon informelle ou d’une autre source par
des moyens raisonnables;
c) qu’il serait injuste de ne pas
permettre à la partie d’interroger la personne avant l’instruction;
d) que l’interrogatoire n’occasionnera
pas de retards, d’inconvénients ou de frais déraisonnables à la personne ou
aux parties.
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[19]
These
criteria are factual and are assessed on a case-by-case basis.
Paragraph 238(3)(a) of
the Federal Courts Rules – the internet service providers have relevant
information
[20]
Voltage
Pictures LLC does not know the names and addresses of the defendants. Since
they are all customers of the internet service providers, the internet service
providers can match the IP addresses identified by Voltage Pictures LLC with
their internal records and provide the names and addresses of the defendants.
[21]
This
information is, in fact, relevant to this case.
Paragraph 238(3)(b) of
the Federal Courts Rules – Voltage Pictures LLC has been unable to obtain
this information informally
[22]
The
internet service providers cannot disclose the names and address of their customers
without an order of this Court.
Paragraph 238(3)(c) of
the Federal Courts Rules – it would be unfair not to allow Voltage
Pictures LLC an opportunity to question the internet service providers
[23]
In
BMG, above, the Federal Court of Appeal confirmed:
[42] ... in cases where plaintiffs show that they
have a bona fide claim that unknown persons are infringing their
copyright, they have a right to have the identity revealed for the purpose of
bringing action...
[24]
Voltage
Pictures LLC cannot assert its copyright or bring an action against the
defendants if it does not know their names and addresses.
[25]
Defendants
should not have the possibility of hiding behind the anonymity of the internet
and continuing to infringe the copyright of Voltage Pictures LLC.
Paragraph 238(3)(d) of
the Federal Courts Rules – the questioning will not cause undue delay,
inconvenience or expense to the person or to the other parties
[26]
Voltage
Pictures LLC agrees to reimburse any reasonable expenses incurred by the
internet service providers in collecting the information sought.
[27]
Obtaining
the names and addresses of the defendants will speed up this action. Without
this information, Voltage Pictures LLC cannot assert its rights.
[28]
Voltage
Pictures LLC is asking this Court that the minimum information necessary to allow
it to assert its rights against the defendants be disclosed to it.
IV. Conclusion
[29]
The
Court grants Voltage Pictures LLC’s motion without costs given that the
plaintiff’s motion is not contested by any of the internet service providers.
JUDGMENT
Further
to the analysis undertaken, the Court orders that:
- Voltage Pictures
LLC proceed with a written examination for discovery of Bell Canada,
Cogeco Cable Inc. and Videotron GP in order to obtain the names and addresses
related to their customer accounts associated with the IP addresses at the
times specified in Annex A attached to the Notice of Motion.
- Within two weeks,
Bell Canada, Cogeco Cable Inc. and Videotron GP disclose to Voltage
Pictures LLC the names and addresses related to their customer accounts
associated with the IP addresses at the times specified in Annex A. This
disclosure shall be in Microsoft Excel format, with publishing rights,
encrypted on a compact disk or any other electronic medium.
- Voltage Pictures
LLC reimburse any reasonable expenses incurred by Bell Canada, Cogeco Cable
Inc. and Videotron GP in collecting the personal information identified in
paragraph 1 of this order.
- Without costs.
“Michel M.J. Shore”
Certified
true translator
Susan
Deichert, LLB
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