Court applies traditional test for interlocutory third-party injunctions to require largest internet service providers to block allegedly copyright infringing site
A judge of the Federal Court of Canada has issued a precedent-setting site-blocking order at the behest of a range of Canadian IP rights holders. The application was brought by Bell Media Inc., Groupe TVA Inc., and Rogers Media Inc., three Canadian broadcasters and the third party respondents were a number of Canadian internet service providers, a number of which are affiliates of the plaintiffs.
In July 2019, the plaintiffs filed a suit against the unnamed persons operating two websites: goldtv.biz and goldtv.ca, and sought an injunction against the defendant alleging that the GoldTV services had been infringing copyright in various broadcasts owned by the plaintiffs. The injunction was granted, but the plaintiffs alleged that GoldTV continued make copyrighted materials available through its services. The plaintiffs then sought an injunction to force the Canadian internet service providers to block consumers from connecting to a range of IP addresses and websites associated with GoldTV.
A number of the ISPs (Bell Canada, Fido Solutions Inc., Rogers Communications Inc. and Videotron Ltd.) consented to the motion, while four others took no position. The only respondent to object was Teksavvy Solutions Inc. The objection is summarized by the Court:
[11] TekSavvy opposes the motion arguing that: (1) the motion relates strictly to the issue of site blocking; (2) the subject matter of the dispute falls within the specialized expertise and mandate of the Canadian Radio-television and Telecommunications Commission [CRTC] pursuant to the Telecommunications Act, SC 1993, c 38 [Telecommunications Act]; and (3) in this circumstance, and although the Court may have jurisdiction, in a narrow sense, the Court should decline to exercise that jurisdiction. TekSavvy further submits that if the Court concludes otherwise, then in the alternative the Plaintiffs have failed to satisfy the test for an interlocutory injunction.
The Court determined that the Federal Court does have jurisdiction simpliciter to issue injunctions against third parties such as the ISPs, and then turned to the question of whether it could issue this particular order.
Teksavvy argued that Parliament had been presented with the possibility of a new legal regime that included site-blocking and had declined to do so. It further argued that the CRTC had exclusive jurisdiction over site blocking by virtue of section 36 of the Telecommunications Act:
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.
The Court noted that when a coalition of broadcasters (the “Fairplay Coalition”) had petitioned the CRTC to enable site-blocking for these purposes, the CRTC had concluded that it did not have jurisdiction over copyright and that the Copyright Act is a complete code dealing with the issue. The Court then wrote:
[37] Teksavvy seeks to characterize the issue on this motion as one of site blocking only. I am not convinced the injunction remedy sought can be so simply divorced from the essential character of the underlying copyright infringement action.
[38] Teksavvy has not argued that the CRTC erred in concluding it lacked jurisdiction in the area of copyright infringement. For the purposes of addressing the issues before me and absent argument to the contrary I accept the CRTC conclusion that Parliament intended the Copyright Act to be an exhaustive regime. Absent clear statutory language to the contrary, where the essential character of the dispute is one of copyright, remedies are to be found in the Copyright Act.
…
[42] In summary, the Court has jurisdiction to grant the relief sought. I am not convinced that any of the provisions of the Telecommunications Act, nor the fact that there is ongoing debate about the role of site blocking in Canada's telecommunications regulatory regime, support the view that the Court should decline to exercise its discretion in this case.
Once the Court determined that it had jurisdiction to issue the particular order, the analysis switched to what test should be applied. The usual test for interlocutory injunctions was accepted, though the Court sought guidance from a similar order issued in Cartier International AG & Ors v British Sky Broadcasting Ltd & Ors [2016] EWCA Civ 658 (“Cartier CA”), a trademarks decision of the England and Wales Court of Appeal:
[52] In Cartier CA the EWCA endorsed a number of principles or factors as being relevant in determining if a site-blocking order is proportional. The factors are:
A. Necessity — a consideration of the extent to which the relief is necessary to protect the plaintiff's rights. The relief need not be indispensable but the court may consider whether alternative and less onerous measures are available;
B. Effectiveness — a consideration of whether the relief sought will make infringing activities more difficult to achieve and discourage Internet users from accessing the infringing service;
C. Dissuasiveness — a consideration of whether others not currently accessing the infringing service will be dissuaded from doing so;
D. Complexity and Cost — a consideration of the complexity and cost of implementing the relief sought;
E. Barriers to legitimate use or trade — a consideration of whether the relief will create barriers to legitimate use by unduly affecting the ability of users of ISP services to access information lawfully;
F. Fairness — a consideration of whether the relief strikes a fair balance between fundamental rights of the parties, the third parties and the general public;
G. Substitution — a consideration of the extent to which blocked websites may be replaced or substituted and whether a blocked website may be substituted for another infringing website; and
H. Safeguards — a consideration of whether the relief sought includes measures that safeguard against abuse.
The Court carried out an analysis of each of the above Cartier CA factors and determined that the balance of convenience favoured the plaintiffs.
A fifteen paragraph order issued to require the blocking of the sites and IP addresses requested by the plaintiffs, the first of which reads:
- Within fifteen (15) days of the issuance of this Order, the Third Party Respondents shall block or attempt to block access by at least their residential wireline Internet service customers to the websites or online services identified at Schedule 1 to this Order (the "Target Websites"), by blocking or attempting to block access to all of the Target Websites' domains, subdomains and IP addresses identified therein. For clarity, the Go1dTV.ca Service is a Target Website for the purpose of this Order. Schedule 1 to this Order is empty for the Go1dTV.ca Service as of the date of issuance of this Order, and may be supplemented by the Plaintiffs if and when appropriate in accordance with paragraph 2 of this Order.
Notably, any customer of any of the third party ISPs has the right to make an application to the Court to vary the order if it affects their ability to access or distribute non-infringing content.
