Voltage Pictures Strikes Again: The Privacy Battle Between ISPs and Copyright Holders

By Scott Miller and Lauren Blaiwais, August 18t^h, 2016

The standards for when an Internet Service Provider (ISP) is required to deliver the names and addresses of individuals suspected of unauthorized downloading of copyright material to copyright holders was set down in the 2014 Federal Court of Canada decision of Voltage Pictures LLC v John Doe and Jane Doe [1] (in this case, the copyright materials were movies). In Voltage, the Court was conscious of both the need to safeguard an individual’s right to privacy, as well as the need to protect the rights of copyright holders (see here).

In July 2016, Voltage Pictures proposed a “reverse” class action alleging copyright infringement and claiming declaratory and injunctive relief against a Respondent whose identity is unknown. This is a unique approach to suing alleged file sharers en masse, a practice resembling that of ‘Copyright Trolls’ (a rights holder that enforces copyright it owns to profit from quick settlements and litigation). It is an opportunistic practice, which Courts generally frown upon.

Voltage, in requesting that the matter be certified as a “reverse” class action, moved to compel Rogers Communications Inc. to disclose “any and all contact and personal information of a Rogers customer associated with an Internet protocol address at the various times and dates” in order to determine who the representative defendant would be.[2] Voltage requested that it not be required to pay any fees and disbursements to Rogers for its compliance with the disclosure order.

Rogers, however, requested reasonable compensation for disclosing the information. Voltage argued that the “notice and notice” provisions of the Copyright Act bar Rogers from receiving any compensation and claimed that, even if Rogers were entitled to compensation, it should only be 50 cents per alleged infringer.

Sections 41.25 and 41.26 of the Copyright Act[3] create the “notice and notice” regime, which is a mechanism by which copyright owners may send a notice of claimed infringement through an ISP to an alleged infringer. Under these provisions, Rogers (the ISP) would be required to forward Voltage’s (the copyright owner) notice of alleged infringement to the Internet protocol address and “retain records to allow the [alleged infringer’s] identity to be determined for a specified time depending on whether the copyright owner has or has not commenced proceedings relating to the claimed infringement.”[4]

Rogers was compelled by the Court to disclose only the name and address of the alleged infringer and Voltage was ordered to pay Rogers $100 per hour, plus HST, for its time spent assembling the information for Voltage. The fee was mandated to be paid in full prior to the disclosure of the contact information. Rogers was also awarded its costs on the motion.

In order to protect the rights of copyright holders while preserving individuals’ privacy rights, the Court instituted certain safeguards. The information released by Rogers can only be used by Voltage in connection with the specific claims in the proceeding, and it must remain confidential and never be disclosed to any other parties or the general public, by making or issuing a statement to the media, until the identity of the alleged infringer becomes part of the public record.

Modern technology has opened up many different means of communication, but it cannot eradicate the personal property rights of individuals. Privacy concerns are important; however, they “must yield to public concerns for the protection of intellectual property rights in situations where infringement threatens to erode those rights.” [5]

For more information please contact:

 
Scott Miller, Partner, Head of the Litigation Department

T: 613.801.1099

E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

Lauren Blaiwais, Articling Student

T: 613.801.1057

E: This e-mail address is being protected from spambots. You need JavaScript enabled to view it.

[1] 2014 FC 161 [Voltage 2014].

[2]Voltage Pictures, LLC et al v John Doe #1 et al, 2016 FC 881, at para 1 [Voltage Pictures 2016].

[3] Copyright Act, RSC 1985, c C-42.

[4] Voltage Pictures, supra note 2 at para 11.

[5] BMG Canada Inc v Doe, 2005 FCA 193.