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COPYRIGHT - Procedure - Discovery - Documents

Tuesday, June 20, 2017 @ 8:52 AM  

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Appeal by movie producers from an order requiring Rogers Communications (Rogers) to disclose identifying information of a customer to them, but only after the appellants paid Rogers’ fee. The appellants commenced a proposed reverse class action claiming declaratory and injunctive relief against unknown individuals for copyright infringement. The appellants alleged that the unknown individuals engaged in illegal file sharing over the internet, thereby infringing their copyrights in several films. The appellants sought an order requiring Rogers to disclose the identifying information of one infringer to them. Rogers did not oppose the disclosure, but submitted that it should be paid reasonable compensation and costs, which it submitted was $100 per hour of work plus HST. The motions judge allowed the motion and ordered Rogers to disclose the information. It also ordered the appellants to pay an hourly fee of $100 plus HST. The motions judge found that the appellants had a right to have the identity of the subscriber revealed and disclosed for the purpose of pursuing their proposed class proceeding. He further found that Rogers was entitled to be compensated for providing such disclosure to the applicants. The appellants appealed the order, arguing that there were tens of thousands of suspected infringers whose identifying information could only be had by paying the same fee. They argued that Rogers’ fee and the court approval of it posed a multi-million dollar barrier between them and the start of legal proceedings that were necessary to protect their rights.

HELD: Appeal allowed. Under s. 41.26(1) of the Copyright Act, an internet service provider was required, among other things, to maintain records in a manner that allowed it to identify suspected infringers and to keep the records for prompt disclosure. Those obligations only arose upon the internet service provider being paid a lawfully charged fee. While the Minister could fix the maximum fee that an internet service provider could charge for performing those duties, no maximum fee had been set. Therefore, an internet service provider could not charge anything for performing its s. 41.26(1) obligations. However, an internet service provider could charge a fee for the actual, reasonable and necessary costs of disclosure. The act of disclosure did not fall within subsection 41.26(1) and therefore was not subject to the "no regulation and, thus, no fee" default rule in subsection 41.26(2). In this case, Rogers failed to adduce sufficient evidence of the costs associated with the act of disclosure. The only evidence in the record suggested that Rogers' cost of disclosure in 2012 was, at most, $0.50 per IP address, but this evidence was not precise or current enough to be relied upon. It was open to Rogers and other internet service providers to ask the Minister to pass a regulation setting a maximum fee. This would permit them to charge a fee not just for the act of delivery, but also for the discharge of their subsection 41.26(1) obligations.

Voltage Pictures, LLC v. John Doe, [2017] F.C.J. No. 477, Federal Court of Appeal, D.W. Stratas, M.J.L. Gleason and J.M. Woods JJ.A., May 9, 2017. Digest No. TLD-June192017005