On November 15, 2019, the Federal Court issued an Order compelling Canada’s primary Internet service providers (“ISPs”) to block their subscribers from accessing two Internet services that distribute infringing television and motion picture content. The decision in Bell Media Inc. et al v Goldtv.biz et al., 2019 FC 1432 is an important victory for copyright owners as it is the first site-blocking Order to be issued by a Canadian Court.
The Plaintiffs were successfully represented by François Guay, Guillaume Lavoie Ste-Marie and Olivier Jean-Lévesque of Smart & Biggar’s Montreal office.
Over the past years, unauthorized subscription services that provide illegal access to live and on-demand television and motion picture content through user-friendly interfaces have become increasingly popular. These services are generally developed, maintained and promoted by software developers who go to great lengths to conceal their identity on the Internet, making it particularly difficult for copyright owners to take action in order to efficiently protect their rights.
On July 17, 2019, Bell Media Inc., Groupe TVA Inc. and Rogers Media Inc. (the “Plaintiffs”) filed an action for copyright infringement against the anonymous developers behind two highly popular unauthorized subscription services that operate under the name GoldTV (the “GoldTV Services”), which distribute a vast amount of content owned by the Plaintiffs and third parties. Despite the issuance of interim and interlocutory injunctions against the GoldTV Services in July and August 2019, some of the services remained in operation, leaving the Plaintiffs without an apparent recourse.
In that context, the Plaintiffs sought an Order that would compel Canada’s primary ISPs to block their subscribers from accessing the GoldTV Services. Canadian Courts had never granted such a remedy, which is not explicitly provided in Canadian law, but similar orders had previously been issued in other jurisdictions such as the United Kingdom, France and Australia.
While most targeted ISPs consented to or did not oppose the motion for a site-blocking order, one ISP opposed it on various grounds, including that the Court did not have jurisdiction to issue the proposed Order and that the proposed Order would be overly intrusive, ineffective, and would be contrary to the principle of net neutrality.
In its November 15, 2019, decision, the Federal Court accepted the Plaintiffs’ position that the Order sought, while novel, was an effective and balanced remedy to protect their rights and issued the site-blocking Order as requested.
In conducting his analysis, the Honourable Mr. Justice Gleeson found that the Order could be granted under the Courts’ general power, as a court of equity, to issue an injunction in all cases in which it appears to be just or convenient to do so. The Court also relied on the Supreme Court’s decision and reasons in Google Inc. v Equustek Solutions Inc. (2017 SCC 34), in which Google was ordered to delist from its search engine all websites used by an infringing defendant, and on other types of equitable Orders aimed at innocent third parties to protect a plaintiff’s rights, such as Norwich and Mareva injunctions.
The Federal Court recognized that it had to develop a test for this new remedy. On this point, Justice Gleeson accepted to apply the test proposed by the Plaintiffs, which notably involves considering the standard test for interlocutory injunctions (serious issue, irreparable harm and balance of convenience) and, at the third step of the test, taking into account a variety of factors applied in similar cases in the UK to ensure that the Order is proportional and that its effects on the parties are properly weighed.
In applying the test for interlocutory injunctions to this case, the Court concluded that the evidence disclosed a strong prima facie case of copyright infringement against the Defendants, that the Plaintiffs would incur irreparable harm if the injunction was not granted and that the need to prevent this harm outweighed the potential impact of a site-blocking Order on the ISPs and Canadian consumers. The Court consequently rejected the opposing position and granted the site-blocking Order.
The site-blocking Order issued by the Federal Court enjoins ISPs to block an initial list of domains, subdomains and IP addresses that are associated with the GoldTV Services, which may be updated and amended if necessary.
This decision is an important victory for Canadian copyright owners, who were too often left without an efficient recourse against those who infringe their rights on the Internet, especially when infringers remain anonymous, are located in foreign jurisdictions, or both.
Rightsholders should also be encouraged by the Federal Court’s flexibility and readiness to grant equitable injunctions against innocent third parties when necessary and without explicit statutory provisions, which could open the door to additional remedies as technology continues to evolve. In fact, this decision follows a series of recent decisions in which the Federal Court has granted various extraordinary remedies against media pirates, demonstrating that it appreciates the highly damaging impacts of piracy in Canada and the pressing need to address this problem.