Rogers Media Inc. v. John Doe 1

Rogers Media Inc. v. John Doe 1
Court (s) Database
Federal Court Decisions
Date
2022-05-27
Neutral citation
2022 FC 775
File numbers
T-955-21
Notes
Reported Decision
A correction was made on May 24, 2024
Decision Content
Date: 20220527
Docket: T-955-21
Citation: 2022 FC 775
Ottawa, Ontario, May 27, 2022
PRESENT: Mr. Justice Pentney
BETWEEN:
ROGERS MEDIA INC. ROGERS COMMUNICATIONS INC. BCE INC. BELL MEDIA INC. CTV SPECIALTY TELEVISION ENTERPRISES INC. THE SPORTS NETWORK INC. LE RESEAU DES SPORTS (RDS) INC. GROUPE TVA INC.
Plaintiffs
and
JOHN DOE 1
JOHN DOE 2
OTHER UNIDENTIFIED PERSONS WHO OPERATE UNAUTHORIZED STREAMING SERVERS PROVIDING ACCESS TO NHL LIVE GAMES IN CANADA
Defendants
and
BELL CANADA
BRAGG COMMUNICATIONS INC. dba EASTLINK
COGECO CONNEXION INC.
DISTRIBUTEL COMMUNICATIONS LIMITED
FIDO SOLUTIONS INC.
ROGERS COMMUNICATIONS CANADA INC.
SASKATCHEWAN TELECOMMUNICATIONS
SHAW COMMUNICATIONS INC.
TEKSAVYY SOLUTIONS INC.
TELUS COMMUNICATIONS INC.
VIDEOTRON LTD.
Third Party Respondents
and
SAMUELSON-GLUSHKO CANADIAN INTERNET POLICY
AND PUBLIC INTEREST CLINIC
BEANFIELD TECHNOLOGIES INC.
Interveners
ORDER AND REASONS
PUBLIC VERSION
(CONFIDENTIAL VERSION ISSUED ON MAY 27, 2022)
I. Introduction [1] The Plaintiffs own copyright for live broadcasts of National Hockey League (NHL) games in Canada. They claim that certain unknown Defendants are unlawfully distributing these broadcasts to individuals in Canada, in breach of their copyright.
[2] The Plaintiffs say that despite the steps they have taken thus far, the piracy continues and there are not any further remedies that are likely to be effective to stop it. That is because these Defendants hide their identities, the vast majority of their activities occur in other countries, and they have adopted business practices, which make it unrealistic to stop them using the traditional legal processes intended to deal with copyright infringement. Because of this, the Plaintiffs say they cannot realistically enforce their copyright by cutting off the source of the unlawfully distributed copyright material.
[3] Instead, the Plaintiffs seek to stop people in Canada from accessing the infringing content. In order to do that, they request a “site blocking” Order against the named Third Party Respondents, who control the vast majority of access to the Internet in Canada. The purpose of the Order they seek is to stop Canadian customers from viewing the copyright-infringing broadcasts of live NHL games.
[4] This case is about whether such a remedy should be granted, and if so, how to balance the interests involved. The relevant interests are those of the Plaintiffs, who own copyright in these broadcasts, the legitimate concerns of the innocent Third Party Respondents, the Internet Service Providers (ISPs) that will have to implement the order, as well as the interests of their customers, whose access to legitimate content might be inadvertently cut off. The remedy here is also of interest to the wider public in Canada, because of its potential scope, reach and impact.
[5] The Order the Plaintiffs seek builds upon a recent precedent, in which this Court approved a different type of site blocking order against a business that provided access to programming content over the internet (Bell Media Inc v GoldTV.Biz, 2019 FC 1432 [GoldTV FC]). This Order was upheld on appeal by the Federal Court of Appeal (TekSavvy Solutions Inc v Bell Media Inc, 2021 FCA 100 [GoldTV FCA]), and on March 24, 2022, leave to appeal to the Supreme Court of Canada was denied (SCC File No. 39876)). The GoldTV FC order can be described as a “static” site blocking order because it listed a specific number of sites to be blocked, and provided that new sites could only be added by order of the Court.
[6] In this case, the Plaintiffs have requested a “dynamic” site blocking Order, which involves trying to follow and block the unlawful streaming as it moves. The Plaintiffs say that the type of order issued in GoldTV FC would not work here because the pirates have adopted new measures to avoid detection and defeat site blocking, including moving their infringing content from site to site on a regular basis. Court approval would be impossible prior to each new blocking step because these efforts need to happen in real time in order to be effective.
[7] The Plaintiffs say this is of particular relevance here, because most fans watch hockey games live, rather than recording them to watch later. This combination of factors means that blocking of unlawful streaming of live NHL broadcasts must happen while the broadcast is underway. Based on the evidence they have gathered, and experience in other countries where similar site-blocking orders have been issued, the Plaintiffs say that a dynamic site blocking Order is needed to keep up with the evolution in how online copyright piracy operates. For example, in this case the sites to be blocked could shift during the course of a single hockey broadcast. This type of dynamic blocking order has never been granted in Canada or in the United States. However, similar orders have been granted in the United Kingdom and Ireland, as well as in some European countries.
[8] Some of the Third Party Respondents are prepared to consent to the Order. Others object on multiple grounds, opposing the grant of the injunction or objecting to the terms of the Order, or both. Although the objecting Third Party Respondents do not adopt identical positions, they advance broadly similar arguments. They say the process the Plaintiffs followed has been inappropriate and unfair. They contend that the Plaintiffs have failed to prove their case. They argue that the Order sought would impose undue risks, practical difficulties and costs on them, noting that they are not accused of any wrongdoing in this matter. Finally, they submit that if any Order is to be imposed, the Plaintiffs must be required to indemnify them completely for the costs associated with compliance, including (for those that would be required to do so) any cost of upgrading their network infrastructure.
[9] I am granting a mandatory interlocutory injunction to the Plaintiffs, although not on the terms they had proposed. I am satisfied that they have established a very strong prima facie case that the unknown Defendants are engaging in ongoing breach of their copyright in the broadcasts of live NHL games. I am also satisfied that the Plaintiffs will suffer irreparable harm if this is allowed to continue. Finally, I find that appropriate conditions can be imposed to minimize the risk of over-blocking of legitimate content and to reduce the burdens imposed on the innocent Third Party Respondents.
[10] The concerns expressed by the Third Party Respondents and Interveners about the scope, reach and implications of the dynamic site blocking order sought here are valid and merit serious attention. In the particular circumstances of this case, however, these concerns do not tip the balance in favour of denying the Plaintiffs’ the relief they seek. First, by the time this decision is issued, the NHL playoffs will be underway, and so the number of games being played – and broadcast – is significantly reduced, and will continue to decline until only two teams are playing in the Stanley Cup final. Second, the Third Party Respondents will only have to block to the limits of their current technical capacity to do so, and they will be indemnified (to a capped amount) by the Plaintiffs for the costs they incur in complying with the Order. Third, the Plaintiffs will retain and pay for an independent expert to verify that the IP addresses identified for blocking fit within the strict criteria defined in the Order, and to monitor the Third Party Respondent’s implementation to identify any practical difficulties they encounter. This expert will provide a confidential report to the Court and the parties, and later a public report will be released and posted on the Parties’ websites.
[11] The dynamic blocking Order granted in this case is unprecedented in Canada. I am satisfied that, in the circumstances of this case, it is just and equitable to grant this relief, subject to the very specific terms and restrictions set out in the Order.
[12] This case raises novel and complex legal issues. Adding to the complexity is the fact that the parties do not neatly line up on both sides of the question. It will be useful, therefore, to set out the background to the case before entering into the analysis.
II. Background
[13] To put this case into its proper context it is necessary to review several matters: (a) the parties and their roles in this case; (b) the NHL broadcasting rights that are the subject of the copyright claim; (c) the internet and online piracy; (d) how site blocking works; and (e) the GoldTV decisions that set the foundation for this motion.
A. The parties (1) The Plaintiffs [14] The Plaintiffs are Canadian entities that own and operate a number of television stations and online subscription services in Canada. While they broadcast a wide variety of television programs, the focus of this case is on live NHL games.
[15] Rogers Media Inc. (Rogers), a fully owned subsidiary of Rogers Communications Inc. (Rogers Communications), owns and operates a number of television stations, which are distributed in Canada through broadcasting distribution undertakings (BDUs) such as Rogers’ affiliate Rogers Communications Canada Inc. (Rogers Cable), to which Canadian customers subscribe for a fee.
[16] BCE Inc. is Canada’s largest communications company. Bell Media Inc. (Bell Media) is a wholly owned subsidiary of BCE. Bell Media is a Canadian company that engages in broadcasting, among other activities. CTV Specialty Television Enterprises (CTV Television) is a subsidiary of Bell Media, while the specialty television stations The Sports Network (TSN) and Le Reseau des Sports (RDS) Inc. (RDS) are subsidiaries of CTV Television.
[17] Bell Media owns and/or operates TSN, RDS and other television stations that it distributes through BDUs, such as its parent Bell Canada and its affiliate BellExpressVu (which together do business as Bell TV) and others. Some of its stations are also broadcast over the air for free.
[18] Groupe TVA Inc. (Groupe TVA) is a broadcaster that owns and/or operates numerous television stations that it distributes through several BDUs, including Groupe TVA’s affiliate Videotron Ltd. (Videotron). Some of its stations are also broadcast over the air for free.
(2) The Third Party Respondents [19] The Third Party Respondents are ISPs that have two things in common. First, they provide the vast majority of internet access to Canadian households and businesses. Second, none of them are accused of any wrongdoing in this case. They are simply conduits through which unlawful breach of copyright is occurring.
[20] In other respects, however, the Third Party Respondents are not a homogenous group, and it is important to draw distinctions both in respect of their relationship with the Plaintiffs and their positions in regard to this litigation. It will be convenient to distinguish between three groups of Third Party Respondents.
(a) “Tied” ISPs [21] A number of the Third Party Respondents are affiliates or wholly-owned subsidiaries of the Plaintiffs. Another way of describing this is that these ISPs are, or have made arrangements to seek to become, integrated vertically with the Plaintiff rights holders. This includes Rogers Cable and Fido Solutions Inc., both affiliates of Rogers; Bell Canada, an affiliate of the other Bell Plaintiffs; and Videotron Ltd., an affiliate of Groupe TVA Inc. and a wholly-owned subsidiary of Quebecor Media Inc..
[22] Each of these “tied” ISPs is also linked with BDUs that distribute the content of their respective affiliate Plaintiff corporations. In general terms, this reflects the phenomenon of “convergence” in the Canadian telecommunications industry (Canada Radio-Television Communications Commission (CRTC), Navigating Convergence: Charting Canadian Communications Change and Regulatory Implications, Feb. 2010).
[23] As noted above, these ISPs have indicated their consent to the Order sought by the Plaintiffs. They need a court order in order to undertake the site blocking, because section 36 of the Telecommunications Act, SC 1993, c 38 requires ISPs to obtain the approval of the CRTC before taking steps to “control the content or influence the meaning or purpose of telecommunications carried by it for the public.” Absent CRTC approval or a court order, the ISPs would contravene section 36 of the Telecommunications Act by engaging in site blocking.
[24] Shaw Communications Inc. (Shaw) is in a different position than the “tied” ISPs, because it has entered into an agreement for Rogers Communications to purchase its shares, but this agreement is subject to the approval of regulators. Shaw did not contest the matter at the hearing, and it maintains that position, and so for the moment, Shaw is best included in the category of “non-contesting ISPs” set out below.
(b) Non-Contesting ISPs [25] Several of the ISPs did not actively participate in these proceedings, although some of them registered concerns with the terms of the proposed Order that are broadly similar to those expressed by the Contesting ISPs. This includes Shaw, Bragg Communications Inc. (Eastlink), Saskatchewan Telecommunications, and TekSavvy Solutions Inc.
(c) Contesting ISPs [26] Several of the ISPs contest the Plaintiff’s motion, arguing that:
the procedure followed by the Plaintiffs was unfair;
the Plaintiffs have not established their case, and
the terms of the Order sought do not reflect the appropriate consideration of their interests or those of their customers.
[27] This group of ISPs includes Cogeco Connexion Inc. (Cogeco), Distributel Communications Ltd. (Distributel) and Telus Communications Inc. (Telus). Telus did not take a position on the procedure followed by the Plaintiffs or whether the Plaintiffs had met their case for an injunction. Rather, Telus focused on the difficulty that it would face in implementing the Order and the particular form of order. The position advanced by these ISPs will be discussed in more detail below. In the discussion that follows, references to the arguments of the Third Party Respondents refer to the positions advanced by Cogeco, Distributel and/or Telus (in regard to the difficulty implementing the Order and its particular form), unless otherwise specified.
(3) The Interveners [28] The Samuelson-Guusko Canadian Internet Policy & Public Interest Clinic (CIPPIC) and Beanfield Technologies Inc. (Beanfield) were granted leave to intervene in this proceeding by order dated October 13, 2021 (2021 CanLII 107613). Both received leave to file written submissions, although Beanfield was limited to making submissions only in respect of the order. CIPPIC also made oral submissions during the hearing of the motion.
[29] CIPPIC sought to situate the case in its wider context by highlighting the interests and issues associated with site blocking orders within the framework of Canada’s approach to regulating the Internet.
[30] Beanfield is an ISP, but it is different from the Third Party Respondents because it delivers its services through an independent, facility-based network. Beanfield’s submissions focused on ensuring that any Order granted in this case took into account the fact that not all ISPs operate in the same way, and that the order was limited to the situation of the ISPs directly subject to it.
[31] The arguments of the interveners are discussed in more detail below.
[32] We turn now to the copyright claim that underlies this proceeding. For all of the complexities of the case, the copyright claim is rather straightforward. The gravamen of copyright protection is control over the right to produce or reproduce the work, here the broadcasts of live NHL games. The Plaintiffs assert that the Defendants are infringing their rights by arranging for and facilitating the streaming of unauthorized copies of these works to viewers in Canada. To set this in its proper context, it is worthwhile examining how NHL broadcasting rights are allocated.
B. NHL Broadcasting Rights in Canada [33] The NHL is a professional ice hockey league that operates in Canada and the United States. It is comprised of 32 teams, including seven teams based in Canada: the Montreal Canadiens, the Ottawa Senators, the Toronto Maple Leafs, the Winnipeg Jets, the Calgary Flames, the Edmonton Oilers, and the Vancouver Canucks.
[34] The NHL season is divided into three phases. These are the pre-season, which usually runs over two weeks, involving six to eight exhibition games; the regular season, which typically runs from early October to early April, consisting of 82 games per team; and the Stanley Cup Playoffs and Final, which usually run from mid-April until mid-June, and can involve between 60 and 105 games in total. Together, these constitute the NHL season.
[35] The broadcasters who hold the rights to particular NHL games film and produce them (by adding elements such as text, images, videos, and commentaries to the footage). Copyright in the live footage and production is then assigned from the broadcaster(s) to the NHL or to the local NHL team playing the game; the NHL and the teams in turn licence these rights back to the broadcasters.
[36] The rights to broadcast NHL games depend on whether games are designated “National Games” or “Regional Games”.
[37] Some NHL games between Canadian teams are designated as National Games, as are the Stanley Cup Playoffs and Final as well as select other events such as NHL All-Star games. All other games are Regional Games.
[38] It is not necessary to describe in great detail the specific rights held by the various Plaintiffs. The Plaintiffs collectively hold the rights to all National and Regional Games in Canada, which they sometimes sublicense to other broadcasters.
[39] Rogers holds the rights to distribute, through television broadcast and online streaming, all live NHL National Games broadcast in the English language in Canada. It also holds the rights to distribute all the Regional Games of some Canadian teams. Rogers Media sub-licenses select National Games it produces for broadcast by the Canadian Broadcasting Corporation as well as the Aboriginal Peoples Television Network.
[40] Rogers broadcasts the games to which it holds rights through a number of television stations, including the Sportsnet branded stations (Sportsnet East, Sportsnet Ontario, Sportsnet West and Sportsnet Pacific), as well as several conventional stations, and NHL Centre Ice (which provides access to out-of-market regional games). Rogers provides access to certain broadcasts through online services, including Sportsnet NOW and NHL Live, which Rogers operates. Rogers also produces several NHL-related programs, generally involving commentary that precedes and follows live NHL games, which it broadcasts in a similar manner.
[41] Bell holds the exclusive rights to distribute all the Regional Games of several Canadian teams. It broadcasts live NHL games through its TSN-branded stations (which include TSN1, TSN2, TSN3, TSN4 and TSN5), as well as through its RDS-branded stations (including RDS and RDS2), and through their corresponding online services (TSN DIRECT and RDS DIRECT). Bell also produces and broadcasts several NHL-related programs, in both English and French.
[42] Groupe TVA holds the exclusive rights to distribute select National Games in the French language.
C. The Internet and Online Piracy [43] The Internet is a global network that is composed of a collection of “nodes” that are directly or indirectly connected. Devices, including computers, smart phones and tablets, each constitute a separate node. Each node has a unique Internet Protocol (IP) address attached to it, expressed in digital form (e.g. 172.217.164.228).
[44] Nodes that Internet consumers typically use tend to focus on accessing content on the Internet. Other nodes, used by the operators of various Internet services, host and provide access to content. Anyone who has used the Internet to find or to share information has engaged with the process, but users are generally not aware of the complex routing system that connects their device to the source of the information and that manages the traffic between the two. Several components of this system, described below, are key to understanding the remedy sought here.
[45] Users typically do not use the IP address associated with any particular node. Instead, they rely on the Domain Name System (DNS) that bridges the gap between IP addresses and domains (e.g., www.NHL.com) or subdomains (e.g., www.NHL.com/scores). The DNS system is essentially the Internet’s phonebook; it matches each domain name with its corresponding IP address. When a user attempts to connect to a recognized domain, the DNS will automatically point that request to the appropriate node associated with the relevant IP address. The DNS is not hosted on a single repository; instead, ISPs and other entities host DNS servers that store the IP addresses used to route the traffic.
[46] The transfer of data on the Internet always involves two mirror acts: downloading, which involves the first node obtaining a copy of the data from a second node connected to the internet, and (simultaneously) uploading, which involves the second node transmitting the data to the first node connected to the Internet.
[47] The relevant type of download for this case is “streaming”: successive portions of a temporary copy of a video broadcast are downloaded, played as the download progresses, and subsequently or progressively deleted from the device. The Plaintiffs provided an apt analogy: streaming is akin to someone reading a book by being handed a few pages at a time, with these being discarded as the next pages are handed to the reader. At the end of the process, the reader has finished the book without the actual hard copy of the book taking up space on their bookshelf. One of the reasons streamed content can be viewed so quickly on a user’s device is that the entire broadcast is not downloaded all at once; instead, the first few segments are downloaded, and then the rest follow in sequence.
[48] Unlawful streaming services require several technological components. First, a “source feed” is needed – in this case, the live broadcast is captured and uploaded to be ready for streaming. Second, “streaming infrastructure” is required to distribute the pirated material to viewers. This involves both hardware and software components, including one or more “streaming servers” and a “streaming platform”.
[49] Many legal streaming services provide subscribers access to copyright material that the streaming service has obtained under licence. Netflix is an example. However, many illegal streaming sites or platforms provide access to pirated material.
[50] Two types of illegal streaming platforms are commonly available: (i) open web piracy sites that are typically free and publicly available, which derive their revenues from advertising, and (ii) unauthorized subscription services that typically provide a higher quality copy of the pirated material as well as easier access to subscribers. Subscriptions to unauthorized subscription services are generally much cheaper than the fees for the services provided by the ISPs, because the pirates do not pay any licencing fees or incur any production costs.
[51] As discussed above, streaming involves breaking a video (or audio) file down into small media files, referred to as segments (the “pages” referred to in the Plaintiffs’ analogy). All of these segments can be located on a single Streaming Server or duplicated and distributed across multiple different Streaming Servers within the Streaming Infrastructure. One advantage of distributing pirated material in this way is that segments can be provided to the end user in the most efficient means possible, to avoid overloading one component which could cause delays or interruptions.
[52] The evidence shows that while a streaming platform can be operated by the same pirate as the streaming infrastructure, in most cases they are not. A single streaming infrastructure, however, can be accessed by a number of different streaming platforms.
[53] The end user – whether seeking legitimate access or unlawful streaming content - is typically unaware of how the information is routed between the source and their device. However, a key element in this case is the ISPs’ capacity to identify and block users’ access to streaming platforms that are unlawfully streaming copyright-infringing content, and thus a brief description of how site-blocking works is in order. This requires, first, a further description of how traffic is routed from the customer through the ISP to the Internet.
[54] ISPs provide access to the Internet over several different types of connections. The section of the infrastructure that connects to the residential customer is referred to as the “last-mile” connection. In Canada, there are generally two types of ISPs: those that own the last-mile infrastructure (referred to as “facilities-based providers” or “common carriers”), and those that lease the last-mile infrastructure (known as “resellers”).
[55] At a high level, the infrastructure ISPs use to connect customers to the Internet involves four elements:
Customer equipment – often a home router, that connects various devices in the home to the network;
Last-mile/access loop – the last-mile connection from the customer’s residence to the access/transportation network owned or leased by the ISP;
The access/transportation network – the system of routers that aggregate and route the traffic received from the last-mile/access loops and transport that traffic onwards to the core network;
The core network – which contains a further set of routers that aggregate and route the traffic to and from multiple access/transportation networks. This network includes the DNS servers and other high-level service infrastructures that are essential to the functioning of the Internet as a system of systems.
[56] An ISP’s core network then connects to the Internet, which itself is a system comprised of a series of other networks through which traffic is routed to enable the simultaneous downloading and uploading of information. An ISP’s infrastructure will include both aggregating routers and core routers. This is key because these are the focal points of the site blocking efforts. Although the technical process is somewhat different as between common carrier ISPs and reseller ISPs, the differences are not significant for the purposes of this case, because both types of ISPs can and do engage in blocking of certain traffic.
D. Site Blocking [57] As stated above, site blocking is a method used to deter or prevent access to streaming platforms that provide access to copyright-infringing and other types of material, and to prevent incoming traffic from causing problems for users or affecting the ISPs network. There are three main types of site-blocking approaches for ISPs:
DNS blocking – which disconnects the link between a domain (or subdomain) and its corresponding IP address in the DNS service; IP address blocking – which blocks traffic to and from a specified IP address; and URL (Uniform Resource Locator) path blocking – which prevents traffic to and from very specific locations on a website or other Internet service.
(1) DNS Blocking [58] The DNS (domain name system) acts as a necessary bridge between a domain name and the corresponding IP address, and it is therefore possible for an ISP that hosts DNS servers to block its subscribers from accessing a particular website. Canadian common carriers and resellers that have DNS servers already possess the capacity to carry out this sort of blocking.
[59] However, it is important to note that while a domain or subdomain typically points to a single IP address at any given time, many domains or subdomains can point to the same IP address because a single server can host multiple websites.
(2) IP Address Blocking [60] This technique focuses on the problematic IP address rather than the domain name. This method can be implemented at the core outer layer of an ISP’s infrastructure. It involves configuring the core router(s) so that they will not route the users’ traffic to a particular IP address. Instead, when a subscriber tries to access that address, the router will send the query to “nowhere” rather than routing it to its original destination. This is referred to as “blackholing” because the request is sent into a “blackhole” rather than the IP address. The process also works in reverse, to prevent malicious content from reaching a particular subscriber’s IP address.
[61] The evidence shows that all of the Third Party ISPs regularly use this method to secure their network from malicious content or activity linked with particular IP addresses. This can involve blocking data transfers and attacks from these IP addresses for periods of up to a few hours. All of the ISPs monitor their networks on a continuous basis to detect problematic traffic and to try to prevent them from affecting the service to other customers. One typical situation is known as a “Distributed Denial of Service” (DDOS) attack. A DDOS attack involves a systematic effort to overwhelm a particular customer’s internet service in order to deny them access. ISPs deal with such incoming attacks on a daily basis, and in some cases, this requires disabling a customer’s access in order to prevent the DDOS attack from taking down an entire node on an ISP’s system.
[62] As will be discussed in more detail below, ISP core routers can only block a certain number of IP addresses at one time, due to capacity limits. |||||||||||||||||||||||||||||||||||||||||||||||| |||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| |||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||| ||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
(3) URL Path Blocking [63] URL Path blocking allows for more specific traffic blocking than the other two methods; it allows an ISP to deny a specific path within a domain without blocking access to other pages within the same domain. To return to an example used earlier, this would allow an ISP to block customers’ access to www.NHL.com/scores, without cutting off access to www.NHL.com or any other pages within that domain.
[64] ISPs that are part of Project Cleanfeed Canada use URL blocking to prevent subscribers in Canada from accessing non-Canadian websites associated with child pornography. This group of ISPs includes Bell, Rogers, Sasktel, Shaw, Telus and Videotron. The evidence shows that Bell updates the list of URLs that are blocked as part of Project Cleanfeed on a daily basis.
[65] At the time of the hearing, not all Third Party ISPs had the capacity to implement URL path blocking.
E. The GoldTV decisions (1) GoldTV FC
[66] As noted earlier, the Plaintiffs seek to build upon the order granted in the GoldTV FC case, and it will be useful to summarize that decision as well as the Court of Appeal’s ruling that upheld the order. Both decisions are discussed in more detail below, in the context of the analysis of the current parties’ specific arguments.
[67] In GoldTV FC, a case involving the same Plaintiffs and Third Party Respondents as the present matter, the Plaintiffs sought an interlocutory injunction to force the Third Party Respondents to block customers from accessing copyrighted broadcasts of television programs. The Plaintiffs filed a statement of claim against two unnamed defendants doing business as “goldtv.biz” and “goldtv.ca” (GoldTV). In view of the steps taken by these defendants to remain anonymous and avoid legal processes, the Plaintiffs also sought an interim injunction for 14 days, as well as an interlocutory injunction. Both were granted.
[68] Despite the issuance of these orders, some of the GoldTV services remained in operation. The unnamed defendants had not filed any statement of defence or otherwise participated in the underlying action. As a result, the Plaintiffs then sought an interlocutory mandatory injunction aimed at the Third Party Respondent ISPs, requiring them to block Canadian customers from gaining access to the unauthorized broadcasts through the GoldTV services, at a specific list of IP addresses and Web domain names.
[69] Several of the Third Party Respondents consented to the order, but TekSavvy and Distributel objected, and both filed records before the Court. Telus also made submissions at the hearing. TekSavvy argued that the Court should not exercise its jurisdiction to grant the injunction for a number of reasons, including that Parliament had deliberately not adopted a site-blocking regime when it amended the Copyright Act, RSC 1985, c C-42 in 2012. It also argued that site-blocking fell within the specialized expertise of the CRTC, which had indicated that such measures should only be available in extraordinary circumstances.
[70] TekSavvy noted that in a 2018 decision, the CRTC had rejected a request from the FairPlay Coalition to require ISPs to block access to websites and services engaged in copyright piracy (Telecom Decision 2018-384). TekSavvy’s general position was that the Plaintiffs’ request had to be considered in the broader context of the Canadian debate on site blocking then underway both in Parliament and before the CRTC. It urged the Court to leave it to those bodies to address the question.
[71] In addition, TekSavvy argued that the Plaintiffs had not met the test to obtain a mandatory interlocutory injunction. A very brief summary of this aspect of the decision will suffice here. The Court found that it had jurisdiction to grant the requested injunction, noting that orders against third parties were sometimes available in Canadian law. It also noted that courts in the UK had granted similar orders based on both a specific legislative provision relating to online piracy and their more general jurisdiction to grant interlocutory relief – a grant of jurisdiction that was broadly similar to that of the Federal Court.
[72] The Court concluded that the Plaintiffs had met the usual three-part test for an interlocutory injunction.
[73] On the first element, the Court found that the Plaintiffs had demonstrated a strong prima facie case of copyright infringement. Turning to the next two elements, whether the Plaintiffs had established irreparable harm, and where the balance of convenience lies, the Court applied the guidance from the UK jurisprudence in identifying and assessing the relevant considerations.
[74] The Court found that the Plaintiffs had established irreparable harm. First, the copyright infringement had continued even after the interim and interlocutory injunctions were granted, and the evidence did not show that less intrusive means of addressing it were likely to be effective. Second, there was a strong prima facie case of ongoing copyright infringement and the Defendants were unknown. The Court found that the financial impact on the Plaintiffs therefore constituted irreparable harm.
[75] Turning to the third element, the Court found that the balance of convenience favoured the Plaintiffs. Applying the factors set out in the UK jurisprudence, described in more detail below, the Court was satisfied that the site-blocking order would be effective without interfering in customers’ access to lawful content, and that it would not impose an undue burden on the Third Party Respondents. The Court was also satisfied that adequate safeguards could be put in place to prevent abuse of the order.
[76] The Court therefore granted the order, although it made certain amendments to the version proposed by the Plaintiffs. In essence, the terms of the order directed the Third Party Respondents to take steps to block access to a specific list that included two website domain names, ten subdomains and eleven IP addresses. The order could be amended on motion by any party, and any individual whose access was blocked could apply to vary it. Other technical details included in this order are discussed below in connection with the analysis of the Order presently requested.
[77] Since the initial GoldTV FC decision, the order has been amended three times, by orders dated December 20, 2019, July 10, 2020 and November 13, 2020. When the present case was argued, the Plaintiffs had brought a motion to seek a further amendment, but the matter had not been heard.
(2) GoldTV FCA
[78] In a decision issued on May 26, 2021, the Federal Court of Appeal dismissed the appeal and affirmed the order granted by Justice Gleeson. The Court of Appeal acknowledged that the order was unprecedented in Canada, but found that it was validly issued and should be upheld.
[79] The Court of Appeal addressed the three main issues TekSavvy raised on the appeal, namely that: the Federal Court did not have the jurisdiction to award a site-blocking injunction; the decision below failed to grapple with the issue that the order violated freedom of expression; and the Federal Court should not have granted the order on the facts of the case.
[80] On the first point, the Court of Appeal found that sections 4 and 44 of the Federal Courts Act, R.S.C. 1985, c. F-7, granted the Federal Court the jurisdiction to award a site-blocking injunction, and this was reinforced by subsection 34(1) of the Copyright Act, which includes injunctive relief among the panoply of remedies for copyright infringement. In support of this conclusion, it cited the following passage from Google Inc v Equustek Solutions Inc, 2017 SCC 34 [Google] at paragraph 23: “[t]he powers of courts with equitable jurisdiction to grant injunctions are, subject to any relevant statutory restrictions, unlimited.”
[81] The Court of Appeal rejected TekSavvy’s arguments that the rights and remedies under the Copyright Act are exhaustive and that Parliament’s choice to adopt a “notice and notice” regime instead of the “notice and takedown” approach adopted in the United States indicated that it did not wish to grant copyright owners the more powerful remedy of site-blocking order against ISPs. The Court of Appeal also rejected the claim that such orders were foreclosed by section 36 of the Telecommunications Act because that provision guarantees net neutrality and bars ISPs from blocking access to websites without an order from the CRTC. The Court of Appeal found that “the general wording of section 36… does not displace the Federal Court’s equitable powers of injunction, including the power to impose a site-blocking order” (para 36).
[82] On the second question, the Court of Appeal rejected the argument that the order should be set aside because the Federal Court failed to address the freedom of expression issues raised by the case. Applying the approach adopted in Google, the Court of Appeal found that it was “not necessary for the Judge to engage in a detailed Charter rights analysis separate and distinct from the balance of convenience analysis that is already to be considered” (para 53). The Court of Appeal found that the decision under appeal adequately considered the freedom of expression considerations.
[83] Turning to the question of whether it was just and equitable to grant the injunction in the circumstances of the case, the Court of Appeal found that that there was no reversible error and thus upheld the decision. Once again, the details of this analysis are discussed in the next sections, and so it is not necessary to review them here.
III. Issues [84] The issues in this case can