Site-blocking: a new type of order in Canada for holders of infringed copyrights

Jules Gaudin[1]
ROBIC, LLP
Lawyers, Patent and Trademark Agents

In a recent landmark decision, Bell Media Inc. v. GoldTV.Biz[2], the Federal Court issued the first Canadian site-blocking order preventing access to the GoldTV.biz and GoldTV.ca sites which offer pirated programs from 250 television channels, by a dozen of Canada’s major Internet Service Providers (“ISPs“). While such a mechanism exists in Europe[3], particularly in France[4] and England[5], for example, it is a novelty in Canada for copyright holders.

Prior to this decision, the Court had already issued interim and interlocutory injunctions against anonymous defendants who were illegally broadcasting the plaintiffs’ shows and programs from illegal streaming sites. Despite these injunctions, the illegalbroadcasting of the programs continued.

For the purpose of putting an end to this situation, the plaintiffs then filed a motion to obtain a site-blocking order against eleven ISPs. Four of them immediately consented, as they were affiliated with one of the plaintiffs. TekSavvy Solutions Inc. (“TekSavvy“), however, opposed the motion while the other defendants simply did not take a position.

Summary

First, while relying on sections 4 and 44 of the Federal Courts Act[6], the Court concluded that, under its equitable jurisdiction, it had the power to make such a restraining order as long as it was “just and equitable”.

Then, the Court recalled that there is a tripartite test to determine whether an interlocutory injunction should be granted. In such case, a plaintiff will need to show that there is (1) a serious issue to be tried; (2) irreparable harm will result if the injunction is not granted; and (3) the balance of convenience favours the plaintiff.

In order to decide on a new situation and at the suggestion of the plaintiffs, the Court decided to draw inspiration from existing case law in the United Kingdom on orders to block sites and  more particularly from two decisions: Cartiers International AG v. British Sky Broadcasting Ltd. [7], confirmed by Cartier International AG v. British Sky Broadcasting Plc[8].

Drawing inspiration from the various criteria set out in these decisions, the Court integrated eight non-decisive and non-exhaustive factors into the last two parts of the tripartite test for the issuance of an injunction:

1. Necessity: The order must be necessary but not indispensable to protect the plaintiff’s rights. Easier alternatives may be considered;
2. Effectiveness: The site-blocking order must be very likely to prevent infringement, or at least reduce and discourage it;
3. Dissuasiveness: The order must dissuade new users from infringing copyright;
4. Complexity and Cost: The complexity and costs involved in implementing the order must be measured;
5. Barrier to legitimate use or trade: The site-blocking order should not prevent access to lawful content by Internet users;
6. Fairness: The order must strike a fair balance between the fundamental rights of the parties, third parties and the general public;
7. Substitution: It must be ensured that blocked sites cannot easily be replaced or substituted by other illegal sites;
8. Safeguards: The order should include measures that protect against abuse

Relying on the tripartite test mentioned earlier, and in combination with the eight factors listed above, the Court will thus decide whether to grant the restraining order.

What about the future?

With this decision, a whole new measure is thus made available to copyright holders to enforce their rights online, in particular against third parties that cannot be identified.

Moreover, this decision is consistent with the findings of the recent review report[9] on the Copyright Act[10] prepared by the House of Commons Standing Committee on Industry, Science and Technology. In fact, it was recommended in this report, to not put in place an administrative regime that would compel ISPs to block sites that are demonstrably and manifestly infringing copyright in a standardized manner. Rather, the report confirmed that such decisions should be taken by courts, in order to ensure that the implementation of such an order is compatible with the situation and its specificities.

It should be noted, however, that this decision was recently appealed by TekSavvy on November 25th, 2019[11]. TekSavvy argues that the Court reached the wrong conclusion under applicable Canadian law and would have placed too much reliance on English case law to grant such an order. TekSavvy also submits that the English cases were inappropriate because they were decided in the context of codifying site-blocking orders, which is clearly not the case in Canada.

It will therefore be necessary to monitor this situation in the coming months to determine the outcome of site-blocking orders in Canada.

For more information about this new option and its implementation, do not hesitate to contact ROBIC’s team.

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