In a recent Federal Court decision, VoltagePictures LLC v. John Doe and Jane Doe, 2014 FC 161 , the question of whether the rights of the copyright holders outweigh the privacy rights of those who download copyrighted material using P2P and BitTorrent sites was posed and answered in the affirmative.
The case echoed similar past actions regarding identity disclosure linked to file sharing of copyrighted material, namely the seminal case of BMG v John Doe where a group of music companies (BMG) attempted to force ISP’s to divulge the identities of KazAA and iMesh file sharers in order to proceed with suits for the alleged copyright infringements. The motion, known as ‘equitable bill of discovery’ was found to have to conform to evidentiary rules subsumed under Rule 238 of the Federal Court Rules:
(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.
BMG’s action was unsuccessful due to inadequate evidence linking IP addresses to file sharers and copyright infringement. The case did produce a test for granting the equitable bill of discovery which could order third parties (in this case ISPs) to provide names and addresses of the alleged copyright infringers under the following 5 criteria:
- plaintiff must establish bona fide case;
- party from whom discovery is sought must have the information at issue;
- party from whom discovery is sought must be the only practical source of information available;
- party from whom discovery is sought must be reasonably compensated for expenses arising out of compliance with the discovery order and legal costs;
- public interests in favour of disclosure must outweigh legitimate privacy concerns.
Applying the binding BMG precedent, the Federal Court held that a plaintiff must satisfy the test under Rule 238 along with a bona fide claim which requires that plaintiff demonstrate a real intention to bring action for infringement based on information obtained without any other improper purpose for seeking the identity of the infringers. Interestingly, it was found that the bona fide standard was more appropriate in the case than the previous, and more stringent, prima facie standard – this preference for a lighter burden is yet another precedential export from BMG and Glaxo before it. Essentially, under prima facie, infringement must be proved before disclosure – a type of putting the horse before the cart exercise which has the potential of stripping plaintiff’s of a remedy. The bona fide standard requires simply that only infringement is actionable from the information requested without any other use of the data.
Another interesting application in the case involved the so-called ‘Norwich Order’ – a pre-action discovery mechanism that compels a third party to provide certain data in its possession to provide potential litigants with crucial information that may be otherwise unattainable. In the case at hand, the court addressed important policy considerations in granting the Norwich order in this type of situation. It held that if the above bona fide claim of copyright infringement has been demonstrated by the plaintiff, the order will be granted albeit with qualifications to protect privacy rights of individuals and to avoid the exploitation of the judicial process to coerce innocent individuals to make payments in order to avoid expensive lawsuits.
The arguments brought forth by Voltage hinged on the fact that it has established the bona fide case through its statement of claim along with results from forensic investigations identifying IP addresses linked to the copyright infringements. The court agreed – the facts fit the BMG criteria – and Voltage’s rights to combat piracy outweighed the privacy interests of the affected internet users.
More than a post-scriptum however, was the court’s address limitations to the granted Norwich Order in order to minimize privacy risks to the internet subscribers. Indeed, the court found value in Voltage’s position that infringers “ought not to be able to hide behind a veil of internet anonymity” but cautioned against the mischief created by compelling all TekSavvy-like parties to reveal private customer information. These so-called ‘copyright-trolling’ actions risk flooding courts with cases potentially involving innocent subscribers as there is no foolproof way to ascertain that a particular user was indeed the party downloading the material from the identified IP address simply by virtue of being connected to the address. As a way of alleviating the deleterious side-effects, the court offered a comprehensive nod to our common law neighbours in the US and UK for safeguards such as a court-preview and approval of the language employed in demand letters to the alleged infringers prior to send-off and a requirement of judicial case-management following any claim.
The case was meticulously reasoned, jurisprudence aptly respected and interests of both piracy pugilists and privacy protectors diligently balanced. Time will tell whether the holding will truly deprive trolls of their dubious legal antics but the prognosis is thus far evincing a positive direction.