Written by Munaf Mohamed, Michael D. Mysak and Allegra Hessels
On September 14, 2018, the Supreme Court of Canada (SCC) released its decision in Rogers Communications Inc v Voltage Pictures, LLC, 2018 SCC 38 confirming the test set out in Leahy for obtaining a Norwich order (consistently applied by lower courts). This case represents one of the first times the SCC has provided any national guidance on a Norwich Pharmacal order—an extraordinary remedy that allows a party victimized by serious misconduct (such as fraud or theft of intellectual property) to conduct clandestine investigations to locate and secure evidence or assets before formally commencing litigation against the wrongdoers.
In the specific matter before it, the SCC allowed Rogers Communications Inc's (Rogers) appeal, holding that an internet service provider (ISP) is allowed to recover reasonable costs incurred by complying with a Norwich order from a company pursuing claims against copyright violators. However, any costs that overlap between the ISP's obligations under the Norwich order and the federal government's "notice and notice" regime are not recoverable, as the regime excludes recovery of such fees. The SCC remitted the decision back to the motion judge to allow Rogers to prove its reasonable costs of compliance with the Norwich order.
The respondents were film production companies who alleged that thousands of unidentified internet subscribers where infringing the companies' copyrights by sharing their films online through peer to peer file sharing networks. Voltage Pictures commenced an action against one of these unknown subscribers for breach of copyright for the concurrent downloading and uploading of films. Voltage brought a Norwich order (order for pre-action disclosure) to compel the appellant ISP, Rogers, to disclose the unknown user's name and personal contact information. Voltage also sought that this order be made without payment of fees to Rogers pursuant to the notice and notice regime, a regime by which, a copyright owner can send a notice of a claimed infringement to an ISP when they suspect that an individual at a certain IP address has infringed its copyright. The ISP is then required to forward this notice electronically to the individual to whom the IP address belongs. However, under the notice and notice regime, the identity of the individual receiving the notice remains confidential, and in order to obtain this information the copyright owner must obtain a Norwich order to compel disclosure by the ISP.
Rogers maintained that it was entitled to recover all the costs incurred for taking steps to fulfill the Norwich order—including the costs related to the notice and notice regime. However, under section 41.26(2) of the Copyright Act, ISPs are not permitted to charge a fee for complying with the notice and notice regime, absent a regulation fixing a maximum fee, with no such regulation has been introduced at the time of the Norwich order in question. The Court was thus tasked with determining what, if any, costs were recoverable in relation to the Norwich order.
The motion judge sided with Rogers, and required Voltage to pay Rogers for the costs associated with all steps taken by Rogers in order to comply with the order. On appeal, the Federal Court of Appeal set aside the motion judge's award, claiming that he erred by: failing to assess the reasonableness of the fees charged by Rogers, and allowing Rogers to recover for additional work above that already done in relation to complying with the notice and notice regime. The Court held that the only costs Rogers could recover in relation to the Norwich order were those incurred in the act of disclosure.
The Majority Decision
The SCC generally sided with Voltage and affirmed that it was not Parliament's intention for the notice and notice regime to be all encompassing. Instead, upon conducting a statutory interpretation analysis of the relevant provisions, the SCC confirmed that in order to obtain the identity and contact information of the alleged copyright infringer, copyright owners are still required to obtain a Norwich order.
Of most precedential significance, however, was the Court's express adoption of the test for obtaining a Norwich order from the Alberta Court of Appeal decision of Alberta (Treasury Branches) v Leahy, 2000 ABQB 575 at para 106 , aff'd 2002 ABCA 101. Leahy has long been used by trial courts and Courts of Appeal as setting the standard, but there were risks of uncertainty and prior to this decision the SCC had never formally commented on this test. Its adoption gives litigants greater clarity and comfort in knowing the standard they must meet to obtain a Norwich order.
Further, the SCC made clear that the general expectation is that parties seeking Norwich orders will have to pay reasonable costs incurred by third parties who are being asked to comply with them in gathering and supplying evidence. However, as this case demonstrates, those costs can in some circumstances be limited.
Specifically, here the SCC held that where there is overlap between an ISP's express or implied obligations under the notice and notice regime, and a Norwich order, the ISP is not entitled to recover costs incurred in relation to these steps. In this case, the SCC identified implicit statutory obligations required of an ISP that are not recoverable, including:
- determining the individual who was assigned the impugned IP address at the relevant time, in order to forward the electronic notice to the accurate individual;
- steps to ensure the accuracy of the ISP's identification process; and
- any necessary actions to ensure that the ISP's records enable them to retain the name and physical address of the person who received the notice.
Since these costs are included as part of an ISP's statutory obligations, they cannot be charged in relation to the Norwich order which occurs subsequently.
In its analysis, the SCC majority made additional comments pertaining to the correct interpretation of the notice and notice regime. Most notably, the SCC affirmed that the regime does not require the ISP to disclose an IP address holder's name or physical address to the copyright owner. Additionally, the ISP is only required to retain and preserve records which would allow them to identify the individual. The regime does not required these records to be disclosed to anyone else nor converted into a format that makes it possible for copyright owners or courts to identify this personal information. The collection of this information remains in the purview of the Norwich test.
In a separate minority decision, Justice Côté agreed that the appeal should be granted and the matter remitted to the motion judge; however, she disagreed with the majority's analysis of the recoverability of costs incurred for the steps taken by Rogers in relation to the Norwich order. She held that these steps did not simply verify the accuracy of the information that Rogers was previously required to retain under the notice and notice regime. Instead, she believed that Rogers' process was intended to determine and verify the identity of the person based on the records it previously gathered. Thus, she held that in addition to assessing the reasonableness of the value of Rogers' fees charged, the motion judge should also make a finding as to whether the time spent by Rogers to complete their process for complying with the Norwich order was reasonable.