IP owners have recently gained a new tool to help stop infringement on the Internet. Canada’s Federal Court has, for the first time, issued an order requiring non-party Internet service providers to block access to websites used to operate unauthorized subscription services in respect of copyrighted works.
Intellectual property owners often face difficulty enforcing their rights against entities engaged in infringing activities on the Internet, in particular where concerted efforts are made to remain anonymous or the entities reside in foreign jurisdictions where enforcement may prove difficult.
In the recent decision Bell Media Inc. v Goldtv.biz, 2019 FC 1432, the Federal Court has, for the first time in Canada, issued a “Blocking Order” compelling non-party Internet service providers (“ISPs”) to block access to websites and Internet services that distribute infringing content.
The Plaintiffs Bell Media Inc., Groupe TVA Inc and Rogers Media Inc. (the “Broadcasters”) are Canadian broadcasting companies that provide a variety of television programing via television and online services. In this action, the Broadcasters allege that two “John Doe” defendants doing business as goldtv.biz and goldtv.ca (collectively “GoldTV”) were infringing the Broadcasters’ copyright by providing subscribers with unauthorized access to their programing content over the Internet (the “GoldTV Services”). Despite diligent efforts, the Broadcasters had been unable to identify the defendants.
In the action, the Broadcasters had obtained interim and interlocutory injunctions ordering GoldTV to cease providing the GoldTV Services. Notwithstanding the issuance of these injunctions, some of the GoldTV Services remained.
Therefore, the Broadcasters brought a motion for an order compelling all of Canada’s major ISPs to block access to the websites and Internet services operated by GoldTV. An order of this nature had not previously issued in Canada (but had in other jurisdictions such as the United Kingdom).
Most of the ISPs did not respond or took no position on the motion. Several ISPs had issues with the proposed order, and one ISP opposed the motion on several grounds, including that the Court did not have jurisdiction to issue the proposed order and that the proposed order would be overly intrusive on the ISPs.
The Court found that it had jurisdiction to grant the order under its power in equity to issue an injunction when it is “just or convenient”. In his analysis, Justice Gleeson relied on the Supreme Court of Canada’s decision in Google Inc. v Equustek Solutions Inc. (2017 SCC 34), in which the Supreme Court upheld an order requiring Google (a non-party to the litigation) to de-index the defendant’s infringing websites.
The Court accepted that the standard test for interlocutory injunctions should be applied, namely (i) there was a serious issue to be tried; (ii) the plaintiff would suffer irreparable harm if the injunction was not granted; and (iii) the balance of convenience favours the plaintiff. In assessing proportionality and weighing the effects of the proposed order under the third branch of the test, the Court held that it was appropriate to seek guidance from the factors set out in the UK jurisprudence for orders of this nature, which it indicated are not exhaustive. Accordingly, the Court reviewed the following factors:
- is the relief necessary to protect the plaintiff’s rights, and are alternative or less onerous measures available;
- will the relief be effective in making the infringing activities more difficult to achieve;
- will the relief dissuade current users and others from accessing the infringing services;
- what is the complexity and cost of providing the requested relief;
- will the relief create barriers to legitimate use by unduly affecting the ability of users of the ISPs’ services to access information lawfully;
- does the relief strike a fair balance between the fundamental rights of the parties, the ISPs and the general public;
- what is the extent to which blocked websites may be replaced or substituted; and
- does the requested relief include measures to safeguard against abuse.
Justice Gleeson concluded that the Broadcasters had established a strong prima facie case, that they would incur irreparable harm if the order was not granted and that the need to prevent this harm outweighed the impact on the ISPs. As a result, the Court granted the requested “blocking order”, which includes provisions to indemnify the ISPS for the costs incurred in complying with the order.
This precedent setting decision provides intellectual property owners with another “arrow in the quiver” in the fight against infringement on the Internet.