The Federal Court Establishes the test for a Site-blocking Order

January 2020 Charity & NFP Law Update

Sepal Bonni and Sean S. Carter

In Bell Media Inc v GoldTV.Biz the Federal Court issued a ground-breaking “site-blocking” order requiring third party Internet Service Providers (“ISPs”) to block access to certain websites operated by anonymous defendants that distribute infringing television and motion picture content. The decision by the Federal Court is important for copyright owners, as it is the first time a site-blocking order has been issued by the Federal Court, and therefore offers a new remedy for copyright holders to prevent access to infringing content.

The order arose after the plaintiffs, three Canadian media companies, filed a copyright infringement action against a number of anonymous developers that operate an unauthorized streaming service that allows users to access television and motion picture content online. After attempts to enforce prior injunctions against the website operators were ignored, the plaintiffs sought a site-blocking order to compel third party ISPs to block customers from accessing the infringing content. Although there is established case law to allow a remedy which compels innocent third parties to provide documents and information for the purposes of a lawsuit, this type of injunctive relief to provide an avenue of redress for those who wish to compel innocent third parties to block access to a website was not previously established in Canadian law. 

Although unopposed by most ISPs, one ISP (Teksavvy) opposed the order on various grounds, including arguing that the court did not have the requisite jurisdiction to issue the site-blocking order. In conducting its analysis, the court reached into both the law of the United Kingdom (“UK”) and Canada to justify the court’s jurisdiction to grant the site-blocking order, pursuant to its equitable powers to issue injunctions.  Canadian law to issue injunctive relief (or the power to order a party to carry out an action or refrain from it) includes the judicial discretion to order it where it is “just and convenient,” relying on both jurisprudence from the UK, and the decision of the Supreme Court of Canada (“SCC”) in Google Inc v Equustek Solutions Inc (“Google”), discussed in the August 2017 Charity & NFP Law Update. In Google, the SCC referred to its basic injunctive relief powers when it found used this jurisdiction to order the tech giant Google (the non-party respondent) to delist from its search engine all websites associated with infringing content. What had not previously been specific relief that a party could request under injunctive relief was this “site blocking” order, and in this way, the SCC is taking established equitable principles and remedies and applying them to the modern context.
The court had to develop a test for this new type of injunctive relief, and gave lengthy reasons for ultimately granting the site-blocking order. In particular, the court applied the standard test for interlocutory injunctions (i.e., there is a serious issue be tried; that irreparable harm will result if the injunction is not granted; and that the balance of convenience favours the plaintiffs). However, in determining the balance of convenience, the court considered a variety of factors that had been applied in similar copyright infringement cases in the UK, including Cartier International AG v British Sky Broadcasting Ltd. (“Cartier”), to ensure the order was proportional.  The eight factors considered were necessity, effectiveness, dissuasiveness, complexity and cost, barriers to legitimate use or trade, fairness, substitution, and safeguards. 

The court noted that the “necessity” factor in Cartier was tied to the “irreparable harm” and therefore considered it as part of the irreparable harm analysis. In the final element of the test, the court used the remaining factors set out in Cartier as a framework in determining the “balance of convenience” in the test for injunctive relief. Using this approach, the court found there was a serious issue to be tried, that the plaintiffs would incur irreparable harm given that the defendants were unknown and there was a strong case of ongoing infringement, and that the balance of convenience favoured the plaintiff given that the need to prevent the harm outweighed any impact of the order on the ISPs or Canadian customers.
Interestingly, this decision shows the court’s willingness to work with existing equitable relief and the need to find new and relevant ways to apply it in the context of new technology and culture. This case may well be a steppingstone to using this equitable remedy to fashion other types of specific orders that are important for copyright owners, especially when online infringers are unknown, or are located in foreign jurisdictions. Corporations, whether they are charities, not-for-profit, or for-profit should carefully consider how this may both impact their operations, both from the perspective of inadvertent infringement (including by employees or volunteers); and, how it provides an established way for copyright holders to protect themselves online by requesting the court to impose this new “site blocking” injunctive remedy.

Read the January 2020 Issue

The CRA's Guidance on Journalism: Clarifying Tax Credits, QCJOs and RJOs
Advisory Committee on the Charitable Sector Holds December Meetings
Legislation Update
-   Provisions of Budget Implementation Act No. 1, 2019 Now In Force
-   Proposed Changes to Employee Stock Option Regime Delayed
-   2020 Budget Consultations in Ontario
-   Ontario Regulations under the Connecting Care Act, 2019
-   Alberta Senate Election Act
-   Nova Scotia's Plastic Bags Reduction Act
-   Yukon's New Liquor Act
Corporate Update
-   ONCA Coming into Force Delayed
-   Updated Policies on Corrections of Articles or a Certificate for Business and Not-for-Profit Corporations
-   Corporations Canada Makes Changes for Online Services to Not-for-Profits
-   Certain Amendments to Ontario's Co-operative Corporations Act in Force
-   New Brunswick's Cooperatives Act Proclaimed in Force
Voluntary Association's Constitution and By-Laws Found to be Contractual
Tax Court Decision on Split Receipting and Donative Intent Upheld on Appeal
Federal Court of Appeal Holds that Atheism is not a Religion
CRA Technical Interpretation Regarding Loanbacks by a Qualified Donee
CRA Technical Interpretation on Prescribed Rates and Undue Benefits
Termination Clause Found to be Void and Unenforceable by the Court of Appeal
The Federal Court Establishes the Test for a Site-blocking Order
Alberta Court of Appeal Rules that Charter Applies to Freedom of Expression by Students on University Campus
Anti-Terrorism/Money Laundering Update
-   Global Fragility Act of 2019
-   EU Renews its Terrorist List
-   OSFI Ceases Publishing Lists of Designated Persons
Charities Legislation & Commentary, 2020 Edition Now Available