Notice-and-Notice

The Supreme Court issued its decision in Rogers Communications Inc. v. Voltage Pictures, LLC, 2018 SCC 38 relating to the costs that ISPs can claim for comply with Norwich orders under the Copyright Act.

The Court considered what fees, if any, ISPs could charge for identifying subscribers who are alleged to have infringed a plaintiffs copyright. The majority framed the issue as follows:

[4] This appeal requires this Court to consider who bears the ISP’s “reasonable costs of compliance” with such a Norwich order. At common law, that burden rests with the copyright owner. In enacting the notice and notice regime, however, Parliament prohibited ISPs from charging a fee for complying with their obligations under the regime (except, as I shall explain, where the Minister has fixed a maximum fee by regulation, which has not occurred to date). This leaves open the question of whether, if any of the steps taken by an ISP to comply with a Norwich order overlap with an ISP’s obligations under the notice and notice regime, the ISP can recover the costs of such duplicative steps as part of its reasonable costs of compliance with the Norwich order.

The court held that the ISP, Rogers in this case, was allowed to be compensated for its reasonable costs to comply with the Norwich order and remanded the case to the trial judge to determine which of the steps were necessary for complying with the Norwich order and were separate from steps were required under the notice-and-notice provisions of the Copyright Act.

[56] In my respectful view, the motion judge erred in law by failing to interpret the full scope of an ISP’s obligations under s. 41.26(1), and then by failing to consider whether any of these eight steps overlap with Rogers’ statutory obligations for which it was not entitled to reimbursement. The Federal Court of Appeal therefore correctly set aside the motion judge’s order. That said, I find myself in respectful disagreement with the Federal Court of Appeal’s decision that the costs for which Rogers may recover in complying with the Norwich order are limited to those incurred in the act of disclosure — although I do agree that Rogers is entitled to recover those costs. As I have explained, the statutory notice and notice regime, as I read it, does not require 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. In response to a Norwich order requiring it to furnish such information (or other supporting information), an ISP is therefore entitled to the reasonable costs of steps that are necessary to discern a person’s identity from the accurate records retained under s. 41.26(1)(b). 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.

The decision was an appeal from 2017 FCA 97, which in turn was an appeal from 2016 FC 881.

See my web page for the status of pending intellectual property leave applications and appeals at the Supreme Court of Canada.

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