The phrase “copyright troll” refers to the emerging business practice among copyright owners of sending aggressive letters to individuals and businesses claiming copyright infringement and threatening to sue if the recipient does not pay an expensive “retroactive license” fee.
The phrase “copyright troll” refers to the emerging business practice among copyright owners of sending aggressive letters to individuals and businesses claiming copyright infringement and threatening to sue if the recipient does not pay an expensive “retroactive license” fee. To date, stock image companies and motion picture producers have been Canada’s most active copyright trolls.
Canadian Copyright Act, RSC 1985, c. C-42
Euro‑Excellence Inc. v. Kraft Canada Inc., 2007 SCC 37,  3 SCR 20 at paras. 97-98 - The Supreme Court of Canada considered, but did not apply, the application of the civilian doctrine of abus de droit and the developing American doctrine of “copyright misuse” to Canadian copyright law. The Court decided the case on other grounds, but explicitly "left for another day" the question of the potential application of these doctrines to Canadian copyright law. This case lays the groundwork for an assertion of a misuse or abuse of process attack against an abusive copyright troll.
Masterfile Corp. v. World Internet Corp., 2001 FC 1416 - The Federal Court dismissed the applicant Masterfile’s motion for summary judgment because the stock image firm had not secured either an assignment of copyright or exclusive license to the copied images from the original artists. Masterfile thus had no standing to bring a claim. However, while not having to make a formal ruling on the issue, the judge wrote that she was sympathetic to Masterfile’s claim for damages above what a license would have cost the defendants, even though the images used by the defendants on their websites were of lower quality than the originals. “In view of their infringement, the respondents are not now entitled to the benefit of negotiated prices that they might have obtained had they sought licences to use the images.” (at para. 47). This case demonstrates that copyright trolls must be either a copyright owner or an exclusive licensee to bring an action for infringement. The Court’s comments about damages are non-binding, but offer some support to trolls’ demands for extra-ordinary retroactive licensing fees. This is an extremely controversial point. See Leuthold v. Canadian Broadcasting Corporation, below, for a different view on the role of licenses in approximating damages.
Voltage Pictures LLC v. Doe, 2011 FC 1024 -The plaintiff Voltage Pictures sued a number of unknown defendants for downloading the movie The Hurt Locker via Bittorrent. The Federal Court granted Voltage’s request to order ISPs Bell, Cogeco, and Videotron to identify the customers associated with certain IP addresses Voltage claimed were involved. The ISPs did not oppose the motion. The Court reiterated that there must be a bona fide claim in such a case, but, as to privacy concerns, “[d]efendants should not have the possibility of hiding behind the anonymity of the internet and continuing to infringe the copyright of Voltage Pictures LLC.” (at para. 25). For whatever reason, Voltage Pictures does not appear to have pursued the alleged infringers. This case nonetheless is a warning that peer-to-peer lawsuits could soon come to Canada, and that you should not rely on your ISP to resist attempts to identify their subscribers.
Note: Differences between Canadian and American copyright laws and court systems mean that American caselaw should only be introduced in Canadian courts with caution. These cases are nonetheless included in this FAQ as they may prove of assistance to Canadian courts in understanding copyright trolls’ business model, assessing their claims for damages and the means by which trolls use court process to pressure targets into settling.
Getty Images (US) Inc. v. Advernet Inc, 797 F Supp 2d 399 (SD NY 2011) - The judge here dismissed the plaintiff Getty Images’ motion for default judgment against the defendant web development company, which was alleged to have used images without Getty’s permission. However, the plaintiff still had to meet a minimum legal threshold in order to be awarded damages, and here Getty’s evidence was lacking both as to whether it rather than the original artists was the owner or exclusive licensee of the images and as to the period of infringement. This case demonstrates that demands by supposed rights-holders are not always well-founded, and shows why they may be more interested in settling quickly rather than proceeding to trial.
Masterfile Corp. v. Country Cycling & Hiking Tours by Brooks, Inc., 2008 WL 313958 (SD NY) - Masterfile won a default judgment against the defendant Brooks, who was alleged to have displayed four photos on his website to which Masterfile claimed an exclusive license. Brooks removed the photos upon request, but would not pay a retroactive license fee of $5880. This was more than the $1120 per photo ($4860) Masterfile claimed it would have charged had it been approached for a license before any infringement occurred. The judge ruled that the entire website constituted a single infringement, and given Brooks’ cooperation and limited financial means awarded Masterfile at total of $1120 in damages and $4860 for legal costs. This shows the both the flexibility given to judges in awarding damages, and the reality that litigation can be expensive for all involved.
Righthaven v. Center for Intercultural Organizing, 2011 WL 1541613 (D.Nev.) - Righthaven was supposedly assigned the copyright to articles originally published by the Las Vegas Review-Journal. Righthaven sued the defendant, a nonprofit focused on immigrant education, for republishing an entire LVRJ article on police targeting minorities. The Court found that in this context the defendant was protected by fair use. This case is an example of some courts’ frustration with copyright trolls. “Plaintiff’s litigation strategy has a chilling effect on potential fair uses of Righthaven-owned articles, diminishes public access to the facts contained therein, and does nothing to advance the Copyright Act’s purpose of promoting artistic creation.” (at 5).
Righthaven LLC v. Democratic Underground, LLC, 791 F. Supp. 2d 968 - Dist. Court, D. Nevada 2011 - Righthaven sued Democratic Underground for copyright infringement after a user on DU’s forum posted an excerpt from an article in the Las Vegas Review-Journal (complete with a link to the original source). Righthaven claimed that it had been assigned the copyright to the work, however the agreement between Righthaven and the LVRJ’s owner Stephens Media showed that Righthaven had only been granted a bare right to sue. As Righthaven did not possess any exclusive rights to the article itself the Court found it lacked standing to bring a lawsuit. The Court further held that Righthaven had failed to disclose Stephens’ continuing financial interest in the outcome of this and earlier Righthaven lawsuits, and the judgment signaled increasing judicial frustration with its business model. This case demonstrates that trolls must enjoy a true copyright interest – ownership or a bona fide exclusive license – before they may sue for copyright infringement.
CIPPIC FAQ, “Defamation and SLAPPs”
CIPPIC FAQ, “Online Anonymity and John Doe Lawsuits”
Electronic Frontier Foundation, “Copyright Trolls”
Electronic Frontier Foundation, “Criminal Justice Blog Moves to Dismiss Sham Copyright Troll Lawsuit”
Electronic Frontier Foundation, “Mass Copyright Litigation: New Challenge for the Federal Courts”
Electronic Frontier Foundation, “Righthaven’s Brand of Copyright Trolling”
Electronic Frontier Foundation,“USCG v. The People”
Fight Copyright Trolls (news and FAQs with a focus on peer-to-peer copyright trolls)
James DeBriyn, “Shedding Light on Copyright Trolls: An Analysis of Mass Copyright Litigation in the Age of Statutory Damages” (2012) 19 UCLA Ent. L. Rev. 79.
DeBriyn examines the mass-litigation business model used by copyright trolls, and the role that high statutory damages play in both giving an incentive to bring these lawsuits and pressuring defendants to settle. He argues that statutory damages should be eliminated, because damages for actual loss and potential criminal sanctions would be a sufficient deterrent against infringement.
Jane Bailey, “The Substance of Procedure: Non-Party Disclosure in the Canadian and U.S. Online Music Sharing Litigation” (2006) 43 Alta. L. Rev. 615.
Bailey looks at the effects the different non-party discloser regimes (i.e. asking ISPs to reveal users associated with certain IP addresses) have had on substantive rights like privacy, and the accuracy of judicial outcomes. While it seems intuitive that more information would lead a court to reach a fairer outcome, Bailey notes that in a context where most cases never reach trial this may not be the case. A copyright troll that obtains information with a view to unfairly pressuring defendants to settle does not leave society better off.
Kathryn Judge, “Rethinking Copyright Misuse” (2004) 57 Stan. L. Rev. 901.
Judge outlines the doctrine of “copyright misuse”, a defence some American courts have found where rightsholders attempt to extend their rights (e.g. via restrictive licensing agreements) in ways contrary to the policy underlying copyright law. Judge argues that rightsholders’ remedies should be limited where they seek to use the law to “gain control over an idea or deter fair use” (at 905).
La Presse, « Téléchargement de The Hurt Locker: des internautes canadiens poursuivis », 28 novembre 2011 (News article (in French) on the Hurt Locker file-sharing suit launched by Voltage Pictures in Canada.)
Wired Magazine, “Newspaper Chain’s New Business Plan: Copyright Suits” (Background on Righthaven and its relationship with Stephens Media.)