Law Times

LAW TIMES COVERING ONTARIO'S LEGAL SCENE | APRIL 29, 2019 9 www.lawtimesnews.com BY JULIUS MELNITZER For Law Times C opyright owners will find it more costly to sue multiple online infringers following the Supreme Court of Canada's decision in Rogers Communi- cations Inc. v. Voltage Pictures, LLC requiring copyright owners to compensate internet service providers for some of their costs. "Voltage wanted to sue over 50,000 copyright infringers and Rogers wanted to charge $100 for finding each name," says Da- vid Zitzerman, head of the en- tertainment law group at Good- mans LLP in Toronto. "So, we're talking serious money here." The Supreme Court, howev- er, refused to accept Rogers $100 fee at face value, leaving the pre- cise amount to a future decision from the Federal Court. "The decision was a practical one based on the court's conclu- sion that more information was required to determine just how Rogers came up with the $100 figure and whether that was rea- sonable," Zitzerman says. While copyright owners can often identify the ISPs that in- fringers are using and their IP addresses, they generally require the co-operation of the ISPs to obtain their identities. Copyright owners seeking identities of alleged infring- ers, then, commonly resort to the "notice-and-notice" regime mandated by the Copyright Act. The regime requires ISPs that receive notices from copy- right owners that they are facili- tating infringement to forward the notice to their customers. But the regime does not re- quire ISPs to reveal identities. Getting them to do that requires a court order called a Norwich order directing the ISP to dis- close the information. Here, Voltage, a movie pro- duction company, obtained such an order compelling Rog- ers to disclose the identity and personal information of 55,000 alleged infringers in support of a "reverse class action" against the infringers. The Federal Court granted the order but also granted Rogers' request for a $100-per-hour fee for assem- bling, verifying and forwarding the information. Voltage appealed to the Fed- eral Court of Appeal and dis- puted the fee. The company based its argument on certain provisions in the notice-and- notice regime in the Copyright Act that prohibited ISPs from charging fees for forwarding the notice to customers and for re- taining records that allowed the identification of the customers. The FCA allowed the appeal, ruling that the trial court erred in approving the $100 fee with- out assessing its reasonableness and finding that the costs in- curred by Rogers over and above the costs incurred in complying with its statutory obligations were reasonable. Rogers ob- tained leave to appeal from the Supreme Court of Canada. As the high court saw it after hearing the appeal, the notice- and-notice regime was not a complete code for dealing with copyright infringement. There was a distinction between an ISP's obligation to keep the ap- propriate records and forward the infringement notice to its customers and an ISP's obliga- tion in response to a Norwich order requiring it to identify in- dividuals. "As I have explained, the statutory notice and notice re- gime, as I read it, does not re- quire an ISP to maintain records in a manner or form that would allow copyright owners or a court to discern the identity and physical address of the person to whom notice was sent," wrote Justice Russell Brown on behalf of eight of the nine judges who heard the appeal. "In response to a Norwich order requiring it to furnish such information (or other sup- porting information), an ISP is therefore entitled to the reason- able costs of steps that are neces- sary to discern a person's iden- tity from the accurate records retained under s. 41.26(1)(b) [of the Copyright Act]. "While these costs, even when combined, may well be small, I would not assume that they will always be 'negligible,' as the Federal Court of Appeal anticipates." So while ISPs could charge for the costs incurred above what was required by their statu- tory obligations, the charges had to be reasonable. Jay Kerr-Wilson, the Ottawa- based co-leader of Fasken Mar- tineau Dumoulin LLP's technol- ogy, media and telecommuni- cations practice, who appeared for a number of intervenors, including Bell and Cogeco, says the decision represents a sensible middle ground. "What the trial judge said was that courts should take ISPs at their word and name a rate, while the FCA went to the other end of the spectrum and con- cluded that, after the ISP did all the things it had to do under the notice-and-notice regime, there was nothing much else to do fol- lowing the Norwich order," he said. "The Supreme Court, on the other hand, looked and this and said, 'Let's get real here' and hear evidence to establish exactly what extra work is caused by the Norwich order and determine a reasonable fee for that work." Whether the decision will af- fect the deluge of lawsuits that sprang up in the 12 months be- fore the decision arose remains to be seen, and it could well de- pend upon the Federal Court's finding as to what constitutes a reasonable fee. According to the National Post, at least 17 copyright infringement lawsuits naming a total of more than 1,000 Canadians were brought in that period. Intellectual prop- erty lawyers and telecom com- panies told the Post that the volume and type of activity was unprecedented in Canada. LT David Zitzerman says a recent SCC deci- sion was a 'practical one.' FOCUS Now more expensive to sue multiple online infringers The Canadian Lawyer InHouse Innovatio Awards celebrate in-house counsel, both individuals and teams, who have found ways to show leadership by becoming more efficient, innovative and creative in meeting the needs of their organizations within the Canadian legal market. To book your seats or to inquire about sponsorship, contact Paul Burton at paul.burton@habpress.ca or 647-537-4705 Date: Sept. 26, 2019 Location: Arcadian Court, Toronto 5:30 p.m. Cocktail Reception 7 p.m. Gala Dinner and Awards Presentation Dress: Business Attire www.innovatio-awards.com THE E B O L G AND MAIL SIGNATURE SPONSOR BRONZE SPONSOR R E N T R A P A I D E M R O S N O P S E Z N O R B GOLD SPONSOR PLATINUM SPONSOR COCKTAIL SPONSOR SILVER SPONSOR THE E B O L G AND MAIL Innovatio-LT_Apr29_19.indd 1 2019-04-25 3:56 PM

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