Docket: T-662-16
Citation: 2016 FC 881
Ottawa, Ontario, July 28, 2016
PRESENT: The Honourable Mr. Justice Boswell
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PROPOSED
CLASS PROCEEDING
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BETWEEN:
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VOLTAGE
PICTURES, LLC,
COBBLER NEVADA,
LLC,
PTG NEVADA,
LLC,
CLEAR SKIES
NEVADA, LLC,
GLACIER
ENTERTAINMENT S.A.R.L.
OF LUXEMBOURG,
GLACIER FILMS
1, LLC, AND
FATHERS &
DAUGHTERS NEVADA, LLC
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Applicants
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And
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JOHN DOE #1,
PROPOSED REPRESENTATIVE RESPONDENT ON BEHALF OF A CLASS OF RESPONDENTS
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Respondent
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And
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ROGERS
COMMUNICATIONS INC.
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Non-Party
Respondent
(Applicants’
Disclosure Motion Only)
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And
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SAMUELSON-GLUSHKO
CANADIAN INTERNET POLICY AND PUBLIC
INTEREST
CLINIC
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Intervener
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ORDER AND REASONS
[1]
The Applicants have initiated a proposed class
proceeding claiming, amongst other things, declaratory and injunctive relief
against the Respondent whose identity is presently unknown to them. It is
alleged that the Respondent (and others like him or her) has engaged in illegal
file sharing over the Internet, and thereby infringed the Applicants’ copyrights
in several films.
[2]
The Applicants wish to have this matter
certified as a so-called “reverse” class action, and towards that end they have
made a motion for an order compelling Rogers Communications Inc. [Rogers] to
disclose any and all contact and personal information of a Rogers customer [the
Subscriber] associated with an identified Internet protocol address at the
various times and dates as set out in Schedule A to their motion. They request
such an order “in accordance with” sections 41.25 and 41.26 of the Copyright
Act, RSC 1985, c C-42. The Applicants also request, as part of an order
requiring Rogers to disclose the identity of the Subscriber, a further order that
there shall be no fees or disbursements payable by them to Rogers in complying
with the order for disclosure.
[3]
Rogers takes no position on whether the
Applicants have met the applicable requirements for obtaining a disclosure
order. It does, however, oppose the Applicants’ request to deny Rogers
reasonable compensation and costs in complying with any order requiring it to
disclose the Subscriber’s contact and personal information.
[4]
For its part, the Intervener says the Court
needs to closely examine the evidence to determine whether any disclosure
should be ordered. Its role in the Applicants’ motion for disclosure was
limited to providing the Court with submissions as to the type and quantity of
identification data to be provided by Rogers, the limits that may be imposed on
the use of such data, and the form of notice that may be required to be
provided to the Respondent when served with the Notice of Application.
[5]
For the reasons that follow, I have determined
that Rogers must disclose to the Applicants only the Subscriber’s name and
address as recorded in its records. Rogers should not be compelled to disclose
any other personal information about the Subscriber it may have in its records,
such as his or her email address or telephone number. I have further determined
that Rogers is entitled to be compensated for providing such disclosure to the
Applicants and also should be awarded its costs in respect of this motion in a
lump sum amount of $500 (inclusive of any taxes or disbursements).
I.
Issues
[6]
This motion raises three main issues:
1.
Should Rogers be ordered to disclose any and all
contact and personal information about the Subscriber?
2.
If so, what information about the Subscriber
should be disclosed to the Applicants?
3.
Is Rogers entitled to be compensated for
providing such disclosure to the Applicants, including an award of costs in
respect of this motion?
II.
Analysis
A.
Should Rogers be ordered to disclose any and all
contact and personal information about the Subscriber?
[7]
The Applicants request a disclosure order “in
accordance with” sections 41.25 and 41.26 of the Copyright Act. These
sections provide as follows:
Provisions
Respecting Providers of Network Services or Information Location Tools
Notice of claimed infringement
41.25 (1) An owner of the copyright in a
work or other subject-matter may send a notice of claimed infringement to a
person who provides
(a) the means, in the course of providing
services related to the operation of the Internet or another digital network,
of telecommunication through which the electronic location that is the subject
of the claim of infringement is connected to the Internet or another digital
network;
(b) for the purpose set out in subsection
31.1(4), the digital memory that is used for the electronic location to which
the claim of infringement relates; or
(c) an information location tool as defined
in subsection 41.27(5).
Form and content of notice
(2) A notice of claimed infringement shall
be in writing in the form, if any, prescribed by regulation and shall
(a) state the claimant’s name and address
and any other particulars prescribed by regulation that enable communication
with the claimant;
(b) identify the work or other
subject-matter to which the claimed infringement relates;
(c) state the claimant’s interest or right
with respect to the copyright in the work or other subject-matter;
(d) specify the location data for the
electronic location to which the claimed infringement relates;
(e) specify the infringement that is
claimed;
(f) specify the date and time of the
commission of the claimed infringement; and
(g) contain any other information that may
be prescribed by regulation.
Obligations related to notice
41.26 (1) A person described in paragraph
41.25(1)(a) or (b) who receives a notice of claimed infringement that complies
with subsection 41.25(2) shall, on being paid any fee that the person has
lawfully charged for doing so,
(a) as soon as feasible forward the notice
electronically to the person to whom the electronic location identified by the
location data specified in the notice belongs and inform the claimant of its
forwarding or, if applicable, of the reason why it was not possible to forward
it; and
(b) retain records that will allow the
identity of the person to whom the electronic location belongs to be
determined, and do so for six months beginning on the day on which the notice
of claimed infringement is received or, if the claimant commences proceedings
relating to the claimed infringement and so notifies the person before the end
of those six months, for one year after the day on which the person receives
the notice of claimed infringement.
Fees related to notices
(2) The Minister may, by regulation, fix the
maximum fee that a person may charge for performing his or her obligations
under subsection (1). If no maximum is fixed by regulation, the person may not
charge any amount under that subsection.
Damages related to notices
(3) A claimant’s only remedy against a
person who fails to perform his or her obligations under subsection (1) is
statutory damages in an amount that the court considers just, but not less than
$5,000 and not more than $10,000.
Regulations — change of amounts
(4) The Governor in Council may, by
regulation, increase or decrease the minimum or maximum amount of statutory
damages set out in subsection (3).
[8]
The Applicants contend that these two provisions
of the Copyright Act, referred to as the so-called “notice and notice” regime,
ground the basis for a disclosure order in this case and, moreover, must be
interpreted to deny Rogers any compensation for compliance with such an order
because, as the parties acknowledge, no fee has been fixed by regulation
pursuant to subsection 41.26(2). The Applicants’ submissions in this regard are
without merit. Their request for a disclosure order “in accordance with”
sections 41.25 and 41.26 is misguided. Nowhere in these provisions is it
explicitly stated that there can or must be an application or motion for a
disclosure order in respect of the information required to be recorded and
retained pursuant to paragraph 41.26(1)(b). Moreover, nowhere in these
provisions is it explicitly stated that a fee or compensation is prohibited or
cannot be paid in complying with a disclosure order made in respect of that
information.
[9]
It is true, as the Applicants point out, that
the request for submissions sent to Internet service providers [ISP] such as
Rogers in 2013, prior to these provisions coming into force in January 2015,
did state that a subscriber’s identity “may be released
to the copyright owner with a court order.” However, nowhere in these legislative
provisions is there any reference to disclosure of a subscriber’s identity by
an ISP whether by court order or otherwise. In this regard, it is apt to note
the Supreme Court of Canada’s decision in Parry Sound (District) Social
Services Administration Board v OPSEU, Local 324, 2003 SCC 42, [2003] 2 SCR
157, where Justice Iacobucci stated for the majority of the Court as follows:
39 To begin with, I think it useful
to stress the presumption that the legislature does not intend to change
existing law or to depart from established principles, policies or practices.
In Goodyear Tire & Rubber Co. of Canada v. T. Eaton Co., [1956]
S.C.R. 610, at p. 614, for example, Fauteux J. (as he then was) wrote that “a
Legislature is not presumed to depart from the general system of the law
without expressing its intentions to do so with irresistible clearness, failing
which the law remains undisturbed”. In Slaight Communications Inc. v.
Davidson, [1989] 1 S.C.R. 1038, at p. 1077, Lamer J. (as he then was) wrote
that “in the absence of a clear provision to the contrary, the legislator
should not be assumed to have intended to alter the pre-existing ordinary
rules of common law”.
[10]
Furthermore, the following comments of Justice
Stone for the Federal Court of Appeal in Glaxo Wellcome PLC v Minister of
National Revenue, [1998] 4 FCR 439, [1998] FCJ No 874 [Glaxo Wellcome],
also serve to undermine the Applicants’ over-broad interpretation of the
“notice and notice” regime provisions:
36 … Cory J. emphasized in Rawluk
v. Rawluk, [1990] 1 S.C.R. 70 (S.C.C.) at page 90 that as a general
principle, the legislature "is presumed not to depart from prevailing law
'without expressing its intentions to do so with irresistible clearness'".
However, the case law indicates that this presumption may be rebutted if it is
clear that the legislature intended to modify existing common law or equitable
rights by providing a comprehensive regulation of the matter at issue: Driedger,
supra, at pages 307 and 309.
[11]
The “notice and notice” regime does not provide
any detailed or comprehensive mechanism for copyright owners such as the
Applicants to enforce their rights as against alleged infringers. At best, it
provides a mechanism for copyright owners to send a notice of claimed
infringement via an ISP to an alleged infringer with the knowledge that there
will be records available at some later date to determine the identity of such
infringer if necessary. An ISP such as Rogers is only obligated under section 41.26(1)
to do two things: (1) forward the copyright owner’s notice of claimed
infringement electronically to the pertinent Internet protocol address; and (2)
retain records to allow the subscriber’s identity to be determined for
specified periods of time depending on whether the copyright owner has or has
not commenced proceedings relating to the claimed infringement. The fact that
no regulation has been made to fix the maximum fee that an ISP may charge for
performing these obligations speaks, not to whether no fee or compensation can
be paid to comply with a disclosure order but, rather, to the current policy
under the “notice and notice” regime that the costs of complying with these
obligations is, at least for the time being, to be borne by the ISP.
[12]
Contrary to the Applicants’ arguments, Parliament’s
intention in enacting sections 41.25 and 41.26 was not one of “irresistible
clearness” to abrogate and depart from established law and principles with
respect to so-called Norwich disclosure orders emanating from the
decision in Norwich Pharmacal Co. v. Customs & Excise Commissioners (1973),
[1974] A.C. 133 (UK HL). The availability of such orders in the Federal Court was
first recognized by the Federal Court of Appeal in Glaxo Wellcome, and
in BMG Canada Inc v Doe, 2005 FCA 193, [2005] 4 FCR 81 [BMG], the
Court of Appeal recognized that:
[41] Modern technology such as the
Internet … 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.
[13]
The principles emanating from BMG that
should be considered when making a Norwich order may be summarized as
follows:
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.
[14]
I am satisfied that the Applicants have adduced
sufficient evidence, notably in the Affidavit of Daniel Macek, to show that
they have a bona fide claim that unknown persons are infringing the
copyright in their films. Consequently, they have a right to have the identity
of the Subscriber revealed and disclosed for the purpose of pursuing their
proposed class proceeding. This right flows from established case law such as
that noted above; it does not flow from and is not grounded in any way by the
“notice and notice” provisions of the Copyright Act.
[15]
I am also satisfied that the other principles
emanating from BMG dictate that an order should be made requiring Rogers
to disclose information about the Subscriber.
B.
What information about the Subscriber should be
disclosed to the Applicants?
[16]
In addressing this issue, I note (as did the
Court of Appeal in BMG) that “caution must be exercised” in ordering
disclosure of information about the Subscriber “to make
sure that privacy rights are invaded in the most minimal way.” I further
note the Court’s approach to disclosure in Voltage Pictures LLC v John Doe,
2014 FC 161 [Voltage], where the email address of the ISP’s customer was
not ordered to be disclosed, as well as the Intervener’s argument that the
information to be disclosed by Rogers to the Applicants should not exceed the
Subscriber’s name and address associated with the Internet protocol address
alleged to be associated with the infringing activity identified by the
Applicants.
[17]
In my view, the Applicants are entitled to
disclosure by Rogers of only the Subscriber’s name and address as recorded in
Rogers’ records. The release of this information by Rogers shall remain
confidential and not be disclosed to any other parties without further order of
the Court and shall only be used by the Applicants in connection with their
proposed class proceeding. Furthermore, the Applicants shall not be permitted
to disclose to the general public by making or issuing any statement to the
media with respect to the information obtained from Rogers.
C.
Is Rogers entitled to be compensated for
providing disclosure of information about the Subscriber to the Applicants,
including an award of costs in respect of this motion?
[18]
The record shows that Rogers was prepared to
disclose information about the Subscriber upon the Applicants submitting a
proposed form of order and prior payment of a fee of $100 per hour plus HST to
cover its costs associated with compiling such information. The Applicants
refused to do so because of their view that the “notice and notice” provisions
of the Copyright Act preclude Rogers from imposing or collecting any
such fee. For the reasons stated above, that view is misguided.
[19]
In any event, the Applicants contend that even
if Rogers is entitled to a fee for disclosing information about the Subscriber,
that fee is at best minimal and should be at most 50 cents per subscriber
because most of the information has already been collected and assembled by
Rogers in complying with its obligations under subsection 41.26(1) of the Copyright
Act. Moreover, the Applicants assert that the fee of $100 per hour is
unreasonable and contrary to certain evidence in the record which suggests that
the fee was only $5 or $10 per subscriber name a few years ago. For its part,
Rogers has offered evidence as to how the $100 per hour fee was established and
why it is reasonable.
[20]
The case law suggests that consideration should
be given to the costs incurred by Rogers in assembling the information about
its Subscriber and complying with a disclosure order (see BMG at para 35
and also Voltage at paras 46 and 138). In Voltage, for example,
it was ordered that “all reasonable legal costs,
administrative costs and disbursements incurred” by the ISP in abiding
by the disclosure order were to be paid by the plaintiff to the ISP prior to
release of the customer information.
[21]
The Applicants’ argument as to the
unreasonableness and the amount of Rogers’ hourly fee is not persuasive. The
fee is what it is, and if the Applicants want information about the Subscriber
they must pay the hourly fee. The record suggests that no more than about an
hour will be necessary for Rogers to assemble, verify and forward the
Subscriber information to the Applicants, so the total cost would be
approximately $113.
[22]
In addition, Rogers is entitled to its costs on
this motion which I fix and award in the amount of $500 (inclusive of any taxes
or disbursements). These costs shall be payable forthwith and, in any event,
within 20 days from the date of this order.
III.
Conclusion
[23]
The Applicants provided the Court with a draft
form of order, including a form of letter to be sent to John Doe, on the day
this motion was heard via teleconference. Not all terms of this draft had been
agreed to by the parties at the time of the hearing, and the Intervener also submitted
a draft form of order.
[24]
Accordingly, the Court directs the parties to
agree upon the terms of the letter to be sent to John Doe within 10 days of the
date of this order and to provide the Court with a final, signature-ready copy
of such letter for the Court’s approval prior to such letter being sent. In the
event the parties are unable to so agree, the Court will review and finalize
such letter based upon the draft form previously provided by the Applicants.
ORDER
THIS COURT ORDERS, for the reasons stated above,
that:
1.
The Non-Party Respondent, Rogers Communications
Inc., shall
disclose to the Applicants, within ten days of the date of this order, the name
and address of the Rogers subscriber
[the Subscriber] associated with the IP address
174.112.37.227 at the following dates and times (UTC):
a.
2016-03-24, 05:25:15
b.
2016-01-14, 08:14:55
c.
2016-02-18, 03:45:27
d.
2016-03-10, 02:23:04
e.
2016-01-26, 01:06:07
2.
The Applicants shall pay to Rogers Communications Inc. an hourly fee of $100,
plus HST, for the time spent and incurred by Rogers
Communications Inc. in assembling and providing the
Subscriber information to the Applicants, such fee to be paid in full prior to
the release of the information to the Applicants.
3.
The Applicants shall include a copy of this
Order in any correspondence sent with the Notice of Application to the
Subscriber.
4.
The Subscriber may request a full copy of the
reasons for this Order from the Applicants and the Applicants shall provide a
copy at no charge to the Subscriber requesting the copy.
5.
Correspondence sent by the Applicants to the
Subscriber with the Notice of Application shall clearly state in bold type
that:
a.
the Applicants currently are seeking to make the
Subscriber serve as the Representative Respondent in a class proceeding they
seek to certify by way of application under Part 5-1 – Class Proceedings of the
Federal Court Rules, SOR/98-106;
b.
no Court has yet made a determination of fact or
law that such Subscriber may be forced to serve as the Representative Respondent
to the class proceeding;
c.
no Court has yet made a determination of fact or
law certifying the Applicants’ proceeding as a class proceeding;
d.
no Court has yet made a determination of fact or
law that such Subscriber is the party responsible for the allegedly infringing
activity identified by the Applicants; and
e.
no Court has yet made a determination of fact or
law that such Subscriber has infringed or is liable in any way for payment of
damages.
6.
The Court directs the parties to agree upon the
terms of the correspondence to be sent to John Doe within 10 days of the date
of this order and to provide the Court with a final, signature-ready copy of
such correspondence for the Court’s approval prior to it being sent.
7.
The information released by Rogers Communications Inc. shall only be used by
the Applicants in connection with the claims in this proceeding.
8.
Without further order of the Court, the
information obtained from Rogers Communications Inc. shall remain confidential and shall not be disclosed to any other
parties or to the general public, by making or issuing a statement to the media
or otherwise, until such time as the Subscriber’s identity becomes part of the
public record of the proceeding.
9.
Any further amendments or additions to this
Order shall be within the discretion of the Case Management Judge for this
proceeding.
10.
The Applicants shall pay to Rogers
Communications Inc. its costs on this motion in the lump sum amount of $500
(inclusive of any taxes or disbursements). Such costs shall be payable
forthwith and, in any event, within 20 days from the date of this Order.
"Keith M. Boswell"
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