Teksavvy Solutions Inc. v. Bell Media Inc.

Teksavvy Solutions Inc. v. Bell Media Inc.
Court (s) Database
Federal Court of Appeal Decisions
Date
2021-05-26
Neutral citation
2021 FCA 100
File numbers
A-440-19
Notes
A correction was made on September, 14, 2021.
Reported Decision
Decision Content
Date: 20210526
Docket: A-440-19
Citation: 2021 FCA 100
CORAM:
NADON J.A.
LOCKE J.A.
LEBLANC J.A.
BETWEEN:
TEKSAVVY SOLUTIONS INC.
Appellant
and
BELL MEDIA INC. GROUPE TVA INC., ROGERS MEDIA INC., JOHN DOE 1 dba GOLDTV.BIZ, JOHN DOE 2 dba GOLDTV.CA, BELL CANADA, BRAGG COMMUNICATIONS INC. dba EASTLINK, COGECO CONNEXION INC., DISTRIBUTEL COMMUNICATIONS LIMITED, FIDO SOLUTIONS INC., ROGERS COMMUNICATIONS CANADA INC., SASKATCHEWAN TELECOMMUNICATIONS HOLDING CORPORATION, SHAW COMMUNICATIONS INC., TELUS COMMUNICATIONS INC. and VIDEOTRON LTD.
Respondents
and
CANADIAN INTERNET REGISTRATION AUTHORITY, THE SAMUELSON-GLUSHKO CANADIAN INTERNET POLICY & PUBLIC INTEREST CLINIC, FÉDÉRATION INTERNATIONALE DES ASSOCIATIONS DE PRODUCTEURS DE FILMS-FIAPF, CANADIAN MUSIC PUBLISHERS ASSOCIATION, INTERNATIONAL CONFEDERATION OF MUSIC PUBLISHERS, MUSIC CANADA, INTERNATIONAL FEDERATION OF THE PHONOGRAPHIC INDUSTRY, INTERNATIONAL PUBLISHERS ASSOCIATION, INTERNATIONAL ASSOCIATION OF SCIENTIFIC, TECHNICAL AND MEDICAL PUBLISHERS, AMERICAN ASSOCIATION OF PUBLISHERS, THE PUBLISHERS ASSOCIATION LIMITED, CANADIAN PUBLISHERS’ COUNCIL, ASSOCIATION OF CANADIAN PUBLISHERS, THE FOOTBALL ASSOCIATION PREMIER LEAGUE LIMITED, DAZN LIMITED and THE BRITISH COLUMBIA CIVIL LIBERTIES ASSOCIATION
Interveners
Heard by online video conference hosted by the registry on March 24 and 25, 2021.
Judgment delivered at Ottawa, Ontario, on May 26, 2021.
REASONS FOR JUDGMENT BY:
LOCKE J.A.
CONCURRED IN BY:
NADON J.A.
LEBLANC J.A.
Date: 20210526
Docket: A-440-19
Citation: 2021 FCA 100
CORAM:
NADON J.A.
LOCKE J.A.
LEBLANC J.A.
BETWEEN:
TEKSAVVY SOLUTIONS INC.
Appellant
and
BELL MEDIA INC. GROUPE TVA INC., ROGERS MEDIA INC., JOHN DOE 1 dba GOLDTV.BIZ, JOHN DOE 2 dba GOLDTV.CA, BELL CANADA, BRAGG COMMUNICATIONS INC. dba EASTLINK, COGECO CONNEXION INC., DISTRIBUTEL COMMUNICATIONS LIMITED, FIDO SOLUTIONS INC., ROGERS COMMUNICATIONS CANADA INC., SASKATCHEWAN TELECOMMUNICATIONS HOLDING CORPORATION, SHAW COMMUNICATIONS INC., TELUS COMMUNICATIONS INC. and VIDEOTRON LTD.
Respondents
and
CANADIAN INTERNET REGISTRATION AUTHORITY, THE SAMUELSON-GLUSHKO CANADIAN INTERNET POLICY & PUBLIC INTEREST CLINIC, FÉDÉRATION INTERNATIONALE DES ASSOCIATIONS DE PRODUCTEURS DE FILMS-FIAPF, CANADIAN MUSIC PUBLISHERS ASSOCIATION, INTERNATIONAL CONFEDERATION OF MUSIC PUBLISHERS, MUSIC CANADA, INTERNATIONAL FEDERATION OF THE PHONOGRAPHIC INDUSTRY, INTERNATIONAL PUBLISHERS ASSOCIATION, INTERNATIONAL ASSOCIATION OF SCIENTIFIC, TECHNICAL AND MEDICAL PUBLISHERS, AMERICAN ASSOCIATION OF PUBLISHERS, THE PUBLISHERS ASSOCIATION LIMITED, CANADIAN PUBLISHERS’ COUNCIL, ASSOCIATION OF CANADIAN PUBLISHERS, THE FOOTBALL ASSOCIATION PREMIER LEAGUE LIMITED, DAZN LIMITED and THE BRITISH COLUMBIA CIVIL LIBERTIES ASSOCIATION
Interveners
REASONS FOR JUDGMENT
LOCKE J.A.
I. Background
[1] This appeal concerns an Order of the Federal Court that all parties agree is unprecedented in Canada. On November 15, 2019, Justice Patrick Gleeson (the Judge) issued an interlocutory Order (the Order) in a copyright infringement action (Federal Court File No. T-1169-19, the Action) requiring a number of Canadian Internet service providers (ISPs), including the appellant, Teksavvy Solutions Inc. (Teksavvy), to block access to certain websites by their customers. This is known as a site-blocking order. The ISP parties’ customers make up a majority of Canadian Internet users. In addition to being unprecedented in Canada, the Order is notable because the ISPs to whom it applies are not defendants in the Action and are not accused of any wrongdoing.
[2] The defendants who are accused of copyright infringement in the Action are two unidentified persons responsible for businesses operating as goldtv.biz and goldtv.ca (the Target Websites), which operate unauthorized subscription services that provide access to programming content over the Internet (the GoldTV Services). The aim of the Order is to impede access to the GoldTV Services by the named ISPs’ customers.
[3] The Action was commenced on July 18, 2019 by three of the respondents – Bell Media Inc., Groupe TVA Inc. and Rogers Media Inc. (the plaintiffs) – who are Canadian broadcasters. The statement of claim alleges that the infringing GoldTV Services began at least as early as July 2017. On the same day as the Action was commenced, the plaintiffs filed an ex parte motion for an interim injunction ordering that the GoldTV Services be immediately disabled. This motion was granted by Justice René LeBlanc (then of the Federal Court) and the interim injunction was issued on July 25, 2019 for a period of not more than 14 days. The plaintiffs’ motion also sought an interlocutory injunction, to replace the interim injunction, with the aim of keeping the GoldTV Services disabled until final determination of the Action on the merits. The interlocutory injunction was granted by Justice Catherine M. Kane on August 8, 2019.
[4] The defendants have never filed a defence in the Action, nor have they participated otherwise in the Action, including in the proceedings brought before Justice Kane and the Judge.
II. Federal Court Order and Later Amendments
[5] On July 31, 2019, after the interim injunction had been issued and while the motion for interlocutory injunction was pending, the plaintiffs filed a separate motion requesting that the ISPs named in the motion be ordered to block access by at least their residential wireline Internet service customers to the Target Websites. The plaintiffs cited the failure of the defendants to comply with the interim injunction order despite service thereof on them on July 25, 2019 in the manner permitted by the Court. They also cited their inability to identify the defendants. This is the motion that led to the Order dated November 15, 2019 that is currently under appeal. It is set to terminate two years after its issuance.
[6] The Order lists the Target Websites’ domains, subdomains and IP addresses in its Schedule 1, and contemplates that the list may be amended by subsequent order to add new domains, subdomains and IP addresses, and delete others, as necessary to reflect those actually used solely or predominantly to enable or facilitate access to the Target Websites. Schedule 1 has since been amended three times: by orders dated December 20, 2019, July 10, 2020 and November 13, 2020.
[7] The Order also provides that the plaintiffs shall indemnify and save harmless the ISPs for the reasonable marginal cost of implementing the Order (and any update thereof), and for any liability, expenses, etc. resulting from any complaint, demand, etc. by a third party as a result of the ISPs’ compliance with the Order.
[8] Teksavvy opposed the motion on the basis that the subject matter of the order, site-blocking, should be addressed by the Canadian Radio-television and Telecommunications Commission (CRTC), and not by the Federal Court. Teksavvy also argued that the legal test for issuance of the order sought was not met.
[9] The Judge issued the Order after considering the following issues:
Does this Court have jurisdiction to issue a site-blocking order?
Should the Court decline to exercise that jurisdiction?
What is the test to be applied?
Have the Plaintiffs met that test?
On what terms should the order issue?
[10] The first four of these issues are addressed in these reasons. The last issue is not in dispute in this appeal.
III. Parties
[11] As indicated above, the appellant is Teksavvy.
[12] The respondents are the plaintiffs and the defendants in the underlying copyright infringement action, as well as the ISPs (other than Teksavvy) who are subject to the Order. Of the respondents, only the plaintiffs submitted a memorandum of fact and law and made oral submissions at the hearing of this appeal.
[13] By Order of Justice David Stratas dated June 24, 2020, 16 interveners were added to the appeal. They filed three memoranda in the following groups:
On behalf of (i) Samuelson-Glushko Canadian Internet Policy & Public Interest Clinic (CIPPIC), and (ii) the Canadian Internet Registration Authority (CIRA);
On behalf of (i) Fédération Internationale des Associations de Producteurs de Films (FIAPF), (ii) Canadian Music Publishers Association, (iii) International Confederation of Music Publishers, (iv) Music Canada, (v) International Federation of the Phonographic Industry, (vi) International Publishers Association, (vii) International Association of Scientific, Technical and Medical Publishers, (viii) American Association of Publishers, (ix) The Publishers Association Limited, (x) Canadian Publishers’ Council, (xi) Association of Canadian Publishers, (xii) The Football Association Premier League Limited, and (xiii) Dazn Limited; and
On behalf of British Columbia Civil Liberties Association (BCCLA).
[14] At the hearing, oral submissions were received from the following six interveners or groups of interveners:
CIPPIC;
CIRA;
BCCLA;
International Publishers Association, International Association of Scientific, Technical and Medical Publishers, American Association of Publishers, The Publishers Association Limited, Canadian Publishers’ Council, Association of Canadian Publishers, The Football Association Premier League Limited, and Dazn Limited;
Canadian Music Publishers Association, International Confederation of Music Publishers, Music Canada, International Federation of the Phonographic Industry; and
FIAPF.
[15] The first three interveners argued in favour of the appellant. The remaining interveners argued in favour of the plaintiffs.
IV. Issues
[16] There are three broad issues in this appeal:
Whether the Federal Court had the power to grant a site-blocking order;
If so, the relevance of freedom of expression; and
Whether the Order was just and equitable.
V. Standard of Review
[17] The Judge’s decision to issue the Order was discretionary in nature. This Court should not interfere in such a decision absent an error on a question of law, or a palpable and overriding error on a question of fact or of mixed fact and law (unless the error is on an extricable question of law): Housen v. Nikolaisen, 2002 SCC 33, [2002] 2 SCR 235, at paras 8, 10, 27; Hospira Healthcare Corporation v. Kennedy Institute of Rheumatology, 2016 FCA 215, 142 C.P.R. (4th) 187 at paras. 69, 74-79. A palpable error is one that is obvious, and an overriding error is one that goes to the very core of the outcome. When arguing palpable and overriding error, it is not enough to pull at leaves and branches and leave the tree standing. The entire tree must fall: Canada v. South Yukon Forest Corporation, 2012 FCA 165, 431 N.R. 286 at para. 46.
VI. Analysis
A. Whether the Federal Court had the power to grant a site-blocking order
[18] In concluding that he was empowered to grant a site-blocking order, the Judge cited sections 4 and 44 of the Federal Courts Act, R.S.C. 1985, c. F-7:
Federal Court — Trial Division continued
Maintien : Section de première instance
4 The division of the Federal Court of Canada called the Federal Court — Trial Division is continued under the name “Federal Court” in English and “Cour fédérale” in French. It is continued as an additional court of law, equity and admiralty in and for Canada, for the better administration of the laws of Canada and as a superior court of record having civil and criminal jurisdiction.
4 La section de la Cour fédérale du Canada, appelée la Section de première instance de la Cour fédérale, est maintenue et dénommée « Cour fédérale » en français et « Federal Court » en anglais. Elle est maintenue à titre de tribunal additionnel de droit, d’equity et d’amirauté du Canada, propre à améliorer l’application du droit canadien, et continue d’être une cour supérieure d’archives ayant compétence en matière civile et pénale.
[…]
[…]
Mandamus, injunction, specific performance or appointment of receiver
Mandamus, injonction, exécution intégrale ou nomination d’un séquestre
44 In addition to any other relief that the Federal Court of Appeal or the Federal Court may grant or award, a mandamus, an injunction or an order for specific performance may be granted or a receiver appointed by that court in all cases in which it appears to the court to be just or convenient to do so. The order may be made either unconditionally or on any terms and conditions that the court considers just.
44 Indépendamment de toute autre forme de réparation qu’elle peut accorder, la Cour d’appel fédérale ou la Cour fédérale peut, dans tous les cas où il lui paraît juste ou opportun de le faire, décerner un mandamus, une injonction ou une ordonnance d’exécution intégrale, ou nommer un séquestre, soit sans condition, soit selon les modalités qu’elle juge équitables.
[19] Section 4 provides that the Federal Court is a court of equity, and section 44 provides that the Federal Court may issue an injunction “in all cases in which it appears to the court to be just or convenient to do so.” As stated in Google Inc. v. Equustek Solutions Inc., 2017 SCC 34, [2017] 1 S.C.R. 824, at para. 23 (Equustek), “[t]he powers of courts with equitable jurisdiction to grant injunctions are, subject to any relevant statutory restrictions, unlimited.”
[20] The Judge also cited subsection 34(1) of the Copyright Act, R.S.C. 1985, c. C-42:
Copyright
Droit d’auteur
34 (1) Where copyright has been infringed, the owner of the copyright is, subject to this Act, entitled to all remedies by way of injunction, damages, accounts, delivery up and otherwise that are or may be conferred by law for the infringement of a right.
34 (1) En cas de violation d’un droit d’auteur, le titulaire du droit est admis, sous réserve des autres dispositions de la présente loi, à exercer tous les recours — en vue notamment d’une injonction, de dommages-intérêts, d’une reddition de compte ou d’une remise — que la loi accorde ou peut accorder pour la violation d’un droit.
[21] Accordingly, injunction is one of the remedies contemplated to address copyright infringement.
[22] Teksavvy argues that subsection 34(1) of the Copyright Act is a general provision that applies “subject to this Act”, and does not contemplate the specific remedy of a site-blocking order. Teksavvy argues that several provisions of the Copyright Act and of the Telecommunications Act, S.C. 1993, c. 38, exclude site-blocking orders from the scope of injunctions that can be issued by the courts. Teksavvy also argues that Equustek is distinguishable. Moreover, Teksavvy argues that, even if the Federal Court had the power to grant a site-blocking order, it should have declined to exercise that power. These arguments are addressed in the following sections.
(1) The Copyright Act
[23] Teksavvy notes that copyright law in Canada is wholly statutory, and that the rights and remedies provided for in the Copyright Act are exhaustive: Keatley Surveying Ltd. v. Teranet Inc., 2019 SCC 43, 169 C.P.R. (4th) 1 at para. 40; Society of Composers, Authors and Music Publishers of Canada v. Canadian Assn. of Internet Providers, 2004 SCC 45, [2004] 2 S.C.R. 427, at para. 82 (SOCAN); Théberge v. Galerie d’Art du Petit Champlain inc., 2002 SCC 34, [2002] 2 S.C.R. 336, at para. 5 (Théberge); CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, [2004] 1 S.C.R. 339, at para. 9 (CCH).
[24] Teksavvy argues that the rights and remedies provided for in the Copyright Act represent a careful balance by Parliament between promoting the dissemination of works and rewarding those who create them. Teksavvy focuses on Part IV of the Copyright Act, entitled “Remedies”, which it describes as the playbook for remedies. Though this Part IV contains a section entitled “Provisions Respecting Providers of Network Services or Information Location Tools” (covering sections 41.25 to 41.27), nothing therein (or elsewhere in the Copyright Act) provides explicitly for a site-blocking order.
[25] Section 41.25 provides that a copyright owner may send a notice claiming infringement to an ISP whose services are used by an infringer to infringe copyright via the Internet. Similar notices are also contemplated for “an information location tool” as defined in section 41.27 – a search engine like Google. Section 41.26 provides that an ISP who receives a notice under section 41.25, and who is paid the lawful fee, shall forward the notice to the alleged infringer and keep records concerning the alleged infringer’s identity. Section 41.26 also provides that the only remedy for failure by the ISP to comply therewith is statutory damages. Section 41.26 does not apply to search engines.
[26] Section 41.27 is specific to search engines. It provides that the owner of a copyright that is infringed by a search engine by reproduction of the work, or by communicating such reproduction to the public by telecommunication, is not entitled to any remedy against the search engine other than an injunction. Section 41.27 does not apply to ISPs. Subsection 41.27(4.1) provides a list of factors that should be considered when granting an injunction against a search engine under that section. The list of factors is as follows:
(a) the harm likely to be suffered by the copyright owner if steps are not taken to prevent or restrain the infringement; and
a) l’ampleur des dommages que subirait vraisemblablement le titulaire du droit d’auteur si aucune mesure n’était prise pour prévenir ou restreindre la violation;
(b) the burden imposed on the provider and on the operation of the information location tool, including
b) le fardeau imposé au fournisseur de l’outil de repérage ainsi que sur l’exploitation de l’outil de repérage, notamment :
(i) the aggregate effect of the injunction and any injunctions from other proceedings,
(i) l’effet cumulatif de cette injonction eu égard aux injonctions déjà accordées dans d’autres instances,
(ii) whether implementing the injunction would be technically feasible and effective in addressing the infringement,
(ii) le fait que l’exécution de l’injonction constituerait une solution techniquement réalisable et efficace à l’encontre de la violation,
(iii) whether implementing the injunction would interfere with the use of the information location tool for non-infringing acts, and
(iii) la possibilité que l’exécution de l’injonction entrave l’utilisation licite de l’outil de repérage,
(iv) the availability of less burdensome and comparably effective means of preventing or restraining the infringement.
(iv) l’existence de moyens aussi efficaces et moins contraignants de prévenir ou restreindre la violation.
[27] This list of factors is unremarkable. These factors, or factors like them, would merit consideration in most motions seeking an injunction against a third party.
[28] Teksavvy notes that the “notice and notice regime” contemplated in sections 41.25 and 41.26 was selected instead of the “notice and takedown” regime that had been proposed by some, and which would have placed the balance of rights more in favour of copyright owners. Teksavvy argues that Parliament’s choice to so limit the remedies available against ISPs indicates that it did not wish to grant copyright owners the more powerful remedy of site-blocking orders against ISPs.
[29] In my view, however, nothing in sections 41.25 to 41.27 of the Copyright Act suggests an intention to deny copyright owners the benefit of a site-blocking order, and nothing in such an order conflicts with these provisions. The fact that Parliament has put in place a regime to notify an alleged copyright infringer that its activities have come to the attention of the copyright owner does not suggest that this represents a limit on the remedies to which the copyright owner is entitled. In fact, the Supreme Court of Canada in Rogers Communications Inc. v. Voltage Pictures, LLC, 2018 SCC 38, [2018] 2 S.C.R. 643, at para. 45 (Voltage) recognized the opposite, stating that “Parliament knew that the [notice and notice] regime was only a first step in deterring online copyright infringement, and that a copyright owner who wished to sue an alleged infringer would still be required to obtain a Norwich order to identify that person.” A Norwich order, like a site-blocking order, is a mandatory interlocutory injunction that is imposed on an ISP. It also is not explicitly provided for in the Copyright Act.
[30] Subsection 34(1) of the Copyright Act intentionally provides broad discretionary powers to address copyright infringement, including injunction. It is important to bear in mind that there is no serious doubt that the GoldTV Services infringe the plaintiffs’ copyright, or that the interim and interlocutory injunctions against the infringers directly were not respected. Accordingly, it is difficult to doubt that the remedies contemplated in subsection 34(1) of the Copyright Act are worthy of consideration.
[31] Moreover, there are examples in the jurisprudence of remedies for copyright infringement that are not specifically mentioned in the Copyright Act and that may be imposed on third parties not accused of infringement. Apart from the Norwich Order mentioned in Voltage, there is the Mareva injunction whereby the assets of a debtor that are in the hands of a third party may be frozen to prevent dissipation. Though not related to innocent parties, the Supreme Court of Canada has also recognized other remedies related to copyright infringement that are not specifically mentioned in the Copyright Act: punitive damages (Cinar Corporation v. Robinson, 2013 SCC 73, [2013] 3 S.C.R. 1168) and declaratory judgment (CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13, [2004] 1 S.C.R. 339).
[32] In my view, the possible remedies contemplated in subsection 34(1) of the Copyright Act include a site-blocking order. The real question is whether the site-blocking order granted in this case was appropriate in the circumstances.
(2) The Telecommunications Act
[33] Teksavvy argues that section 36 of the Telecommunications Act contemplates net neutrality by ISPs, and provides that exceptions thereto must be approved by the CRTC. This provision reads as follows:
Content of messages
Neutralité quant au contenu
36 Except where the Commission approves otherwise, a Canadian carrier shall not control the content or influence the meaning or purpose of telecommunications carried by it for the public.
36 Il est interdit à l’entreprise canadienne, sauf avec l’approbation du Conseil, de régir le contenu ou d’influencer le sens ou l’objet des télécommunications qu’elle achemine pour le public.
[34] Teksavvy argues that this provision excludes the Federal Court from ordering an ISP to block a website. The plaintiffs do not doubt the general principle of net neutrality, but they argue that section 36 of the Telecommunications Act does not displace the Federal Court’s jurisdiction to issue a site-blocking order.
[35] The plaintiffs note that the CRTC has acknowledged that, though it may authorize site-blocking, it does not have the power to require an ISP to block a website: Telecom Decision CRTC 2018-384 at para. 67. In response, Teksavvy argues that site-blocking is currently subject to a two-step process whereby the Federal Court would first issue an order that would empower the CRTC then to order that a website be blocked. Though the plaintiffs oppose this argument, it is interesting to note a passage in the Report of the House of Commons’ Standing Committee on Industry, Science and Technology dated June 2019. Page 94 thereof appears to indicate that three of the respondents in the present appeal (or affiliates thereof) – BCE, Shaw and TELUS – agreed in submissions before that Committee that such a two-step process was indeed necessary, and that the Telecommunications Act should be amended to address this “unnecessary duplication of processes.”
[36] In my view, the general wording of section 36 of the Telecommunications Act does not displace the Federal Court’s equitable powers of injunction, including the power to impose a site-blocking order. The wording of section 36 would have to be more explicit to have that effect, especially if it were to give rise to the awkward two-step process described in the previous paragraph. Section 36 prohibits a Canadian carrier, including an ISP, from “control[ling] the content or influenc[ing] the meaning or purpose of telecommunications carried by it for the public.” I agree with the plaintiffs’ argument that complying with a Court-ordered injunction does not amount to controlling or influencing. On the contrary, it is the ISP that is being controlled or influenced by the Order.
[37] It is also notable that the majority of the Supreme Court in Equustek found that Google’s “content neutral character” was not an impediment to the de-indexing order granted in that case: Equustek at para. 49. Though Google was not subject to section 36 of the Telecommunications Act, neutrality was nevertheless considered and found not to be an obstacle.
(3) Whether Equustek can be distinguished
[38] Teksavvy argues several grounds on which the facts in the present case are distinguishable from those in Equustek. First, Teksavvy argues that Equustek involved trademarks and trade secrets rather than copyright. Unlike trademark and trade secrets, and as indicated above, legal rights in copyright exist only by statute. Where the common law may provide certain remedies regarding trademarks and trade secrets, Teksavvy argues, all remedies regarding copyright must be contemplated by statute.
[39] In my view, Equustek should not be distinguished on the basis that it involved trademarks and trade secrets rather than copyright. As indicated above, subsection 34(1) the Copyright Act does provide for “all remedies by way of injunction” where copyright has been infringed. This provision gives a court of equity like the Federal Court broad powers to impose injunctions to remedy copyright infringement. Moreover, though the Supreme Court in Equustek mentioned trademarks and trade secrets as the legal rights in issue, it is clear that copyright infringement was also in issue in the action underlying that decision. The decision following trial in the underlying action, Equustek Solutions Inc. v. Jack, 2020 BCSC 793, 325 A.C.W.S. (3d) 260, identified breaches of the Copyright Act as being among the wrongful acts alleged. Paragraphs 259 to 286 of that decision were devoted to that issue, which concerned reproduction of a product manual and application notes.
[40] A second ground that Teksavvy asserts to distinguish Equustek is that the site-blocking order at issue in the present appeal is more intrusive than the de-indexing order that was discussed in Equustek. I recognize that a site-blocking order denies access to a website, whereas a de-indexing order merely removes one tool for finding a website. However, I see no reason that Equustek should not be considered an authority for granting a mandatory injunction other than a de-indexing order against a third party not accused of wrongdoing. In my view, Equustek is good authority for the availability of a site-blocking order. The circumstances of each case must be considered to determine whether and what type of injunction may be appropriate. Though there are questions as to the effectiveness of a site-blocking order in the circumstances of this case, as well as whether less intrusive alternatives were available, those questions should be considered in determining whether such an order should be granted here, not to whether a court has the power to grant such an order at all.
[41] A third ground argued by Teksavvy to distinguish Equustek concerns the extent of previous unsuccessful efforts to address ongoing infringement in Equustek as compared to the present case. In Equustek, the Supreme Court discussed many such efforts over a couple of years before the motion for an injunction against Google. These efforts included injunctions against the infringers and efforts to locate them. Teksavvy notes that the motion in question in the present appeal was filed just 13 days after the underlying action was commenced, and only six days after the interim injunction against the defendants was granted. Teksavvy argues that the plaintiffs did not adduce any evidence of meaningful efforts to identify, locate and engage directly with the defendants.
[42] As with the previous ground asserted by Teksavvy to distinguish Equustek, the issue of previous unsuccessful efforts to address infringement without a site-blocking order should be considered among the circumstances relevant to whether such an order should be granted in this case. It is not a basis to dismiss Equustek as an authority in this case or to find that the Federal Court did not have the power to make a site-blocking order at all. Where, in an action against an anonymous defendant, a court can be convinced that said defendant has and will maintain its anonymity and ignore an injunction against it, it would seem pointless and unfair to require that the plaintiff jump through certain hoops and wait a certain time to confirm what it already knows, and the court already accepts, before seeking an injunction against a third party.
[43] A final thought on Equustek concerns an argument by Teksavvy that a site-blocking order is inappropriate in this case because “it is essentially a final remedy more powerful than anything the [plaintiffs] could obtain at the end of trial.” Teksavvy argues that interlocutory relief will not normally be granted where there is no prospect for a specific remedy being granted at trial, and that the recognized list of exceptions to this rule should not be expanded without due consideration. I note that this argument was not sufficient to stop the de-indexing order in Equustek. As Teksavvy notes, the dissent in Equustek (see para. 63) was convinced that such an order should not be granted because it gave the plaintiff more than it sought in its original claim, and eroded the plaintiff’s remaining incentive to proceed with the underlying action. In my view, this argument, made before the Supreme Court and dismissed by the majority, must be likewise dismissed in this Court. It is also notable that the Order in the present appeal is subject to an additional provision that it terminates two years after its issuance.
(4) Should the Judge have declined to grant the Order
[44] Teksavvy argues various reasons that the Judge should have declined to grant the Order. These include questions concerning the effectiveness of a site-blocking order, the need for amendments, and the extent of the plaintiffs’ efforts to address the infringement without a site-blocking order, including resort to the notice of claimed infringement remedy provided for in section 41.25 of the Copyright Act. For the reasons mentioned in the paragraphs above, these issues are more appropriately considered below in discussion of whether the Order was just and equitable.
(5) Conclusion
[45] On the basis of sections 4 and 44 of the Federal Courts Rules, as well as subsection 34(1) of the Copyright Act, and finding no legal obstacles, I conclude that the Federal Court was correct in finding that it had the power to grant the Order.
B. Freedom of Expression
[46] The Canadian Charter of Rights and Freedoms, Part I of The Constitution Act, 1982, being Schedule B to the Canada Act 1982 (UK), 1982, c. 11 (the Charter) includes section 2(b) which states that, among other fundamental freedoms, everyone has the right to freedom of expression. Section 1 of the Charter provides that the freedoms set out therein, including the freedom of expression, are subject to “such reasonable limits prescribed by law as can be demonstrably justified in a free and democratic society.”
[47] The issue of freedom of expression was argued on the basis of four sub-issues:
Whether the freedom of expression defined in the Charter is engaged by the Order;
If so, whether freedom of expression is infringed by the Order,
If so, whether such infringement is justified under section 1 of the Charter, and
Whether the Judge’s consideration of freedom of expression was adequate.
[48] Teksavvy argues that the scope of freedom of expression is very broad, and cites Irwin Toy Ltd. v. Quebec (Attorney General), [1989] 1 S.C.R. 927, 25 C.P.R. (3d) 417 (Irwin Toy), in support. Indeed, the majority of the Supreme Court of Canada concluded at p. 968-970 that activity that conveys meaning is expressive regardless of the content or meaning being conveyed, and such activity prima facie falls within the guaranteed freedom. The content of protected expression can be conveyed through an infinite variety of forms of expression such as written or spoken words or physical gestures or acts, though the majority in Irwin Toy excluded violent expression from protection. Commercial expression is not excluded: Irwin Toy at p. 971.
[49] Teksavvy argues that the Order affects the freedom of expression of two groups: the ISPs who are required to block certain websites, and their customers who would otherwise have access to those websites. Section 2(b) of the Charter protects listeners as well as speakers: Little Sisters Book and Art Emporium v. Canada (Minister of Justice), 2000 SCC 69, [2000] 2 S.C.R. 1120, at para. 41; Ford v. Quebec (Attorney General), [1988] 2 S.C.R. 712, 90 N.R. 84 at 767.
[50] I have difficulty accepting that ISPs like Teksavvy engage in any expressive activity when they provide their customers with access to certain websites. As Teksavvy itself has argued, it acts as a common carrier subject to an obligation of net neutrality. As such, it should not, and presumably does not, show any preference for one website over another based on its content. In this sense, its everyday activities in question are not expressive and therefore do not engage freedom of expression. That said, I accept that Teksavvy’s customers could have an expressive interest that is implicated by the Order.
[51] Teksavvy also argues that the Order infringes freedom of expression since it denies Teksavvy’s customers access to the GoldTV Services, and such infringement is not justified under section 1 of the Charter.
[52] The plaintiffs argue that Charter rights are not engaged in this case because (i) the activities in question are unlawful, and (ii) the Order concerns a private dispute and not an act of government.
[53] In my view, it is not necessary to decide whether the Charter is engaged and, if so, whether freedom of expression is infringed. In considering the issue of freedom of expression in the context of a particular equitable remedy, 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. This is clear from the decision in Equustek in which the majority engaged in no such separate Charter rights analysis.
[54] It is relevant here to note again Teksavvy’s argument that the injunction in issue in Equustek (a de-indexing order) was less intrusive than the site-blocking order in issue here. This point is debatable since the former applied outside Canada’s borders, whereas the latter is limited to Canada. In any case, the intrusiveness of the injunction was merely one of the circumstances to be considered by the Judge in determining whether to issue the Order. The role of this Court on appeal is to determine whether, in view of the applicable standard of review, the Judge made a reviewable error in his analysis. Most of the discussion on that issue is found in the next section concerning whether the Order was just and equitable. However, it is convenient to discuss here the issue of the adequacy of the judge’s analysis of freedom of expression.
[55] Teksavvy argues that the Judge’s consideration of the freedom of expression issue was inadequate. The Judge’s analysis of this issue was indeed brief. At paragraph 69 of his reasons, at the beginning of his balance of convenience analysis, he noted Teksavvy’s argument that “site-blocking is an extreme measure that risks inadvertently stifling free expression by blocking legitimate content.” At paragraph 95, he noted Teksavvy’s argument that the Order would negatively impact the individual freedom of expression rights of ISP customers. Finally, at paragraph 97, the Judge concluded that:
[…] in the face of a strong prima facie case of ongoing infringement and a draft order that seeks to limit blocking to unlawful sites and incorporates processes to address inadvertent over-blocking that neither net neutrality nor freedom of expression concerns tip the balance against granting the relief sought. As has been previously noted by the Supreme Court of Canada, albeit in a different context, the jurisprudence has not, to date, accepted that freedom of expression requires the facilitation of unlawful conduct (Equustek at para 48).”
[56] Though Teksavvy might have wished for a different result, or at least a more fulsome analysis of freedom of expression, I cannot agree that the Judge’s analysis on this issue was inadequate. That analysis noted Teksavvy’s concerns for ISPs’ customers’ freedom of expression rights, and concluded that, in view of the undisputed, ongoing infringement and measures to limit over-blocking, those concerns did not tip the balance against the Order.
[57] I take additional comfort in this view from a comparison to the extent of the freedom of expression analysis by the majority in Equustek. There, freedom of expression was likewise considered briefly as part of the balance of convenience analysis. The majority bracketed its discussion of freedom of expression by stating at paragraph 45:
[…] I do not see freedom of expression issues being engaged in any way that tips the balance of convenience towards Google in this case […]
and at paragraph 49:
[…] Even if it could be said that the injunction engages freedom of expression issues, this is far outweighed by the need to prevent the irreparable harm that would result from Google’s facilitating [the infringer’s] breach of court orders.
[58] Analysis of freedom of expression was similarly brief in the courts below in Equustek.
[59] Though it remains to consider whether the Judge made any reviewable error in his balancing analysis overall (including the issue of freedom of expression), that is for discussion in the next section. I am not convinced that the Judge’s analysis was inadequate.
C. Whether the Order was just and equitable
[60] The legal test applicable in a case like this was discussed in Equustek at paragraph 25:
RJR — MacDonald Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311, sets out a three-part test for determining whether a court should exercise its discretion to grant an interlocutory injunction: is there a serious issue to be tried; would the person applying for the injunction suffer irreparable harm if the injunction were not granted; and is the balance of convenience in favour of granting the interlocutory injunction or denying it. The fundamental question is whether the granting of an injunction is just and equitable in all of the circumstances of the case. This will necessarily be context-specific.
[61] It is relevant here to reproduce the following comments from the Supreme Court in R. v. Canadian Broadcasting Corp., 2018 SCC 5, [2018] 1 S.C.R. 196, at para. 13 (CBC), after it described the test in RJR — MacDonald:
This general framework is, however, just that — general. (Indeed, in RJR — MacDonald, the Court identified two exceptions which may call for “an extensive review of the merits” at the first stage of the analysis.) In this case, the parties have at every level of court agreed that, where a mandatory interlocutory injunction is sought