Written By Martin Kratz
In Bell Media Inc. v. GoldTV.Biz, 2019 FC 1432, the Federal Court dealt with a novel motion in Canada for a “site-blocking order”. The broadcasting company plaintiffs sought an interlocutory mandatory injunction against the innocent third-party Internet Service Providers (ISPs) seeking to compel the ISPs "to take steps to block their customers from accessing websites and Internet services operated by the anonymous Defendants."
The plaintiffs allege that the defendants are infringing copyright by operating unauthorized subscription services that provide subscribers access to the plaintiff's programming content over the Internet.
The innocent third-party respondents are the major Canadian ISPs and most of them consented to the motion. TekSavvy raised a number of objections including that the dispute falls within the specialized expertise and mandate of the Canadian Radio-television and Telecommunications Commission (CRTC) and in this circumstance, "although the Court may have jurisdiction, in a narrow sense, the Court should decline to exercise that jurisdiction."
The plaintiffs had previously obtained a preliminary injunction against the anonymous defendants but had not been able to identify them. The requirements and safeguards to compel innocent third parties to identify defendants (a Norwich order) are well established.1 The requirements and safeguards to compel innocent third parties to block a web site are not well established.
The Federal Court began by finding that it had jurisdiction to issue a site-blocking order. The Court did acknowledge that section 36 of the Telecommunications Act provides the CRTC with the authority to authorize an ISP to block a website but noted that in Telecom Decision 2018-384, the CRTC had concluded that "section 36 confers authorizing power and not a mandatory power" and as a result "the power to mandate blocking must be found elsewhere and must relate to the subject matter that is clearly within the Commission’s jurisdiction". Ultimately, the Court found that there is no "CRTC jurisdiction over the underlying copyright issues and an absence of authority to grant the type of relief being sought" on the present motion and the site-blocking order would not interfere with CRTC jurisdiction.
The Court then turned to the test to be applied for a site-blocking order. The Standing Committee on Industry, Science and Economic Development had considered addressing a site-blocking order but considered the number of complex factors to be weighed justified further study before setting up such a framework. The Federal Court looked to jurisprudence from the United Kingdom, Cartier International AG v. British Sky Broadcasting Ltd.,  EWCA Civ 658 [Cartier CA] and Cartier International AG v. British Telecommunications plc,  UKSC 28 [Cartier SC], where there is a codified power to grant a site-blocking order in cases of copyright infringement. The Federal Court was unconcerned about adopting rules that included interpretations of European Directives and noted that in Cartier CA, the England and Wales Court of Appeal had held that it would have been prepared to find the authority to issue a site-blocking order under the U.K. High Courts enabling legislation.
In addressing the threshold question of whether or not the granting of the injunction is just and equitable in all of the circumstances", the Federal Court looked to Cartier CA where the Court identified the factors being relevant in determining if a site-blocking order is proportional as follows:
- "Necessity—a consideration of the extent to which the relief is necessary to protect the plaintiff’s rights. The relief need not be indispensable but the court may consider whether alternative and less onerous measures are available;
- Effectiveness—a consideration of whether the relief sought will make infringing activities more difficult to achieve and discourage Internet users from accessing the infringing service;
- Dissuasiveness—a consideration of whether others not currently accessing the infringing service will be dissuaded from doing so;
- Complexity and Cost—a consideration of the complexity and cost of implementing the relief sought;
- Barriers to legitimate use or trade—a consideration of whether the relief will create barriers to legitimate use by unduly affecting the ability of users of ISP services to access information lawfully;
- Fairness—a consideration of whether the relief strikes a fair balance between fundamental rights of the parties, the third parties and the general public;
- Substitution—a consideration of the extent to which blocked websites may be replaced or substituted and whether a blocked website may be substituted for another infringing website; and
- Safeguards—a consideration of whether the relief sought includes measures that safeguard against abuse."
The Federal Court then sought to adapt those factors into the well-established test for the granting of interlocutory injunctive relief in Canada, namely whether "(1) there is a serious issue be tried; (2) irreparable harm will result if the injunction is not granted; and (3) the balance of convenience favours the plaintiff."2
The Federal Court deviated from the Canadian test adapting the Cartier factors noting that the "necessity factor is … closely linked to the irreparable harm branch of the test." As a result, the Federal Court chose to consider arguments relating to "the availability of alternative and less onerous measures under this branch of the test and not as part of the balance of convenience analysis."
Applying the Canadian test for granting interlocutory injunctive relief, the Federal Court found a serious issue since the "evidence discloses a strong prima facie case of copyright infringement" by the defendants despite the earlier Court order directing the defendants to cease operating the infringing service. On the irreparable harm element of the test, the Federal Court was not convinced that damages were an adequate remedy both since they may be difficult to calculate and the claim arose in a context of "a strong prima facie case of an ongoing infringement of the Plaintiffs’ copyright where the defendants are unknown". The Court was similarly not persuaded that the plaintiff's had not pursued other options available to address the defendant's conduct.
On the balance of convenience element of the test TekSavvy argued that "site-blocking is an extreme measure that risks inadvertently stifling free expression by blocking legitimate content" and therefore the adverse impact of site-blocking order on the ISPs "and Canadian consumers outweighs any harm the Plaintiffs might incur as a result of the infringing activity". The Federal Court choose to apply the Cartier factors as a framework in which to consider and address the interests of the plaintiffs, the ISPs and the broader public.
Effectiveness requires a consideration of whether the order sought will render the infringing activity more difficult and discourage access to the infringing services. The evidence showed availability of circumvention measures but the Court found they might be difficult to implement. Similarly, the Court was not troubled that not all ISPs in Canada would be bound by the order as the ISPs represents a significant portion of Canadian subscribers.
The Court noted that the circumvention costs, even if minimal, "may have a dissuasive or deterrent effect."
Complexity and Cost
TekSavvy has submitted that “to implement and maintain a system of site-blocking could run into the hundreds of thousands of dollars and could involve significant strain on TekSavvy’s human resources”. TekSavvy also suggests the granting of a site-blocking order in this case would create a precedent that could ultimately see ISPs faced with hundreds or even thousands of site-blocking orders.
The Court considered that the terms of the draft order and the limited evidence in support of the estimates of the potential costs of compliance, were sufficient to overcome this objection.
The order required that the ISPs engage in DNS blocking, and IP address blocking with respect to domains and IP addresses identified in the order and does not compel the ISPs to engage in URL blocking.
Barriers to Legitimate Trade
The Court considered whether the proposed order will unduly prevent the ISPs’ customers from accessing lawful content. By limited the order to the specific domains, subdomains and IP addresses identified in the order, having provisions for removal of a domain or IP address where the “sole or predominant purpose” criteria are no longer satisfied and providing that addition of domains, subdomains or IP addresses can only occur after notice to the Court and the filing of evidence to establish the sole or predominant purpose of the newly identified domains or addresses, the Court considered these risks were adequately managed.
The Court was not willing to conclude that the principle of net neutrality is of no application where a site-blocking order is sought. However, the Court was satisfied by an order that seeks to limit blocking to unlawful sites and incorporates processes to address inadvertent over-blocking in the face of a strong prima facie case of ongoing infringement. The Court considered in such a case that neither net neutrality nor freedom of expression concerns tip the balance against granting the relief sought.
This factor requires consideration of whether the blocked websites may be replaced or substituted by another infringing website. The Court acknowledged that substitution is a possibility but stated that "the mere possibility of substitution is not a sufficient ground upon which to conclude that this factor weighs against granting of the relief sought".
The Court considered that the order contains a series of measures to safeguard the varying interests engaged from abuse or misuse of the order.
In this case, the Court found that all of the Cartier factors weighed in favour of the plaintiffs and was satisfied that the balance of convenience favours the granting of the order. It is fortunate that some ISPs did challenge the order so that the Court has had the opportunity to consider many of the policy issues arising for site-blocking orders in more detail.
Whether the Cartier factors are the correct approach to properly weigh and balance the interests of all of the stakeholders is yet to be seen. The decision in this case has been criticized on a number of grounds including importantly that the "many complex policy issues (including copyright enforcement, freedom of expression, net neutrality, and telecom competition) is best left to Parliament."