Norwich Relief—SCC Provides Guidance On Pre-Trial Disclosure Orders

On September 14, 2018, the Supreme Court of Canada (SCC) released its decision in Rogers Communications Inc v Voltage Pictures, LLC, 2018 SCC 38 confirming the test set out in Leahy for obtaining a Norwich order (consistently applied by lower courts). This case represents one of the first times the SCC has provided any national guidance on a Norwich Pharmacal order—an extraordinary remedy that allows a party victimized by serious misconduct (such as fraud or theft of intellectual property) to conduct clandestine investigations to locate and secure evidence or assets before formally commencing litigation against the wrongdoers.

In the specific matter before it, the SCC allowed Rogers Communications Inc's (Rogers) appeal, holding that an internet service provider (ISP) is allowed to recover reasonable costs incurred by complying with a Norwich order from a company pursuing claims against copyright violators. However, any costs that overlap between the ISP's obligations under the Norwich order and the federal government's "notice and notice" regime are not recoverable, as the regime excludes recovery of such fees. The SCC remitted the decision back to the motion judge to allow Rogers to prove its reasonable costs of compliance with the Norwich order.

Factual Background

The respondents were film production companies who alleged that thousands of unidentified internet subscribers where infringing the companies' copyrights by sharing their films online through peer to peer file sharing networks. Voltage Pictures commenced an action against one of these unknown subscribers for breach of copyright for the concurrent downloading and uploading of films. Voltage brought a Norwich order (order for pre-action disclosure) to compel the appellant ISP, Rogers, to disclose the unknown user's name and personal contact information. Voltage also sought that this order be made without payment of fees to Rogers pursuant to the notice and notice regime, a regime by which, a copyright owner can send a notice of a claimed infringement to an ISP when they suspect that an individual at a certain IP address has infringed its copyright. The ISP is then required to forward this notice electronically to the individual to whom the IP address belongs. However, under the notice and notice regime, the identity of the individual receiving the notice remains confidential, and in order to obtain this information the copyright owner must obtain a Norwich order to compel...