Norwich Orders have become a common tool to detect wrongdoers hiding behind the elusive veil of the internet. Whether the matter is with respect to defamation, intellectual property infringement, or fraud, the equitable remedy of pre-action discovery to compel Internet Service Providers (“ISPs”) to disclose a wrongdoer’s identity can help claimants determine their causes of action before they commence litigation.
A question that has been raised, however, is who bears the costs of the Norwich Order? Is it the claimant seeking the Norwich Order or the ISP subject to the equitable remedy? To complicate the matter further, how does this interact with an ISP’s obligations under the “notice and notice” regime pursuant to Canada’s Copyright Act?
By way of background, ss. 41.25 and 41.26 of the Copyright Act govern the statutory “notice and notice” regime for alerting alleged copyright infringers in Canada. These sections under the Copyright Act state that a copyright owner may send a notice of claimed infringement to an ISP, who must then forward the notice to the alleged infringer and retain records that will allow the ISP to determine the identity of the alleged infringer. An ISP is precluded from charging a fee for performing these statutory obligations.
As luck would have it, the Supreme Court of Canada in Rogers Communications Inc. v. Voltage Pictures, LLC, 2018 SCC 38 recently found that, while some of the costs associated with identifying the name and address of the person against whom the Norwich Order is used would be subsumed under an ISP’s statutory obligations, this does not mean that the ISP must maintain these identification records in a form and manner that would permit a copyright owner or court to determine the alleged copyright infringer’s identity. The copyright owner would, however, be entitled to receive that useful information through a Norwich Order, in which the ISP would be entitled to the reasonable costs of compliance.
Therefore, when determining the scope of an ISP’s entitlement to reasonable costs of compliance with a Norwich Order, the Supreme Court held the courts will need to consider whether the ISP’s fees are reasonable in light of its obligations under the notice and notice regime.
The case is significant for both ISPs and copyright owners who suspect that their copyright is being infringed. While ISPs are statutorily required to retain some information about alleged copyright infringers, and while courts will consider that statutory requirement when determining the reasonable costs owed to an ISP following a Norwich Order, ISPs are still entitled to costs for complying with the Norwich Order that go above and beyond their obligations under the Copyright Act.
To learn about the Federal Court of Appeal’s decision to deny the ISP’s costs, read Gilbertson Davis LLP’s post on the appellate court’s here. If you are involved in a copyright or intellectual property dispute, or a dispute requiring injunctive relief, please contact us for an initial consultation.