BMG Canada v. Doe

Citation: BMG Canada Inc. v. Doe, 2005 FCA 193

Factual Background
Canadian record and music publishing companies sued 29 suspected P2P users for infringing the companies’ copyrights. The copyright owners did not know the P2P users’ real names; but the copyright owners were able to determine the P2P users’ IP addresses, and from those, the copyright owners were able to identify the users’ Internet service providers.

Trial Court Decision
The case therefore began &mdash; as similar cases in the United States now begin, since the Verizon case eliminated pre-lawsuit subpoenas to ISPs &mdash; with a motion by the copyright owners seeking an order requiring those ISPs to identify the suspected P2P users.

The trial court reasoned that to be entitled to such an order, the copyright owners had to show they had alleged a prima facie case of infringement. And the trial court held that the copyright owners had failed to do that, because the “private copying” provisions of the Canadian Copyright Act permit P2P file sharing.

Appellate Court Decision
The copyright owners appealed, with significant &mdash; though not unqualified &mdash; success. In an opinion by Judge Edgar Sexton, the Federal Court of Appeal ruled that the copyright owners are not required to show they had alleged a prima facie case of infringement, at this early stage of the case. Instead, Judge Sexton said, “It is sufficient if they show a bona fide claim, i.e., that they really do intend to bring an action for infringement of copyright based upon the information they obtain, and that there is no other improper purpose for seeking the identity of these persons.”

More significantly, Judge Sexton faulted the lower court judge for ruling on the ultimate merits of the case without hearing evidence or considering “all applicable legal principles.” The Judge pointed out that the defense of “private copying” is not available in all circumstances. It is not, for example, if the user copies files onto something that is not an “audio recording medium” &mdash; a potentially critical point, in light of the court’s separate ruling that iPods and MP3 players are not “audio recording mediums.”

Judge Sexton also faulted the lower court judge for not considering whether the act of copying downloads into a “shared” P2P directory could constitute an infringing “authorization because it invited and permitted other persons with Internet access to have the musical works communicated to them and be copied by them.”

And finally, the Judge faulted the lower court for ruling against the copyright owners on the grounds they had not shown the P2P users had “knowledge” that the files in their shared directories were being “infringed.” Judge Sexton pointed out that Canadian law makes it an infringement to copy or communicate a work that the person knows “or should have known” infringes copyright.

Discussion
The reason the Court of Appeal overruled the lower court only “in effect,” is because it actually did not. Instead, it “dismissed” the copyright owners’ appeal &mdash; that is, it affirmed the lower court &mdash; but it did so “without prejudice to the [copyright owners’] right to commence a further application for the disclosure of the identity of the ‘users’. . . .”

The reason for the copyright owners’ success was not unqualified &mdash; Judge Sexton himself described his ruling as a “divided success” &mdash; is that in order to get the information they seek, the copyright owners will have to show at least two things. They will have to show that they avoided delay between their investigation and their request for the identities of ISP customers, because the Internet addresses used to identify P2P users are not permanently assigned and thus, after time, may be the addresses of ISP customers who are not suspected of being P2P users. The copyright owners also will have to show that the information they acquired about suspected P2P users was limited to information about “copyright infringement issues.”

Judge Sexton also said that if ISPs are ordered to disclose information about their customers to copyright owners, the type of information to be disclosed and the purpose for which it is used may be limited by “specific directions.”