BitTorrent, Bad Evidence, and the Boundaries of Norwich Orders

While the film Hellboy: The Crooked Man delivers on-screen horror-superhero thrills, the production company faced drama off-screen over its copyright litigation. In Hellboy Productions v Doe #1, Associate Judge John Cotter of the Federal Court of Canada rejected a motion by a film studio seeking to compel disclosure of identities of internet subscribers allegedly involved in infringing copyright in its film. The Court dismissed the motion because Hellboy failed to show that it had a bona fide copyright claim and failed to establish that Telus, Cogeco or Bell was the internet service provider (ISP) for the alleged wrongdoers. 

The facts of the case should be familiar to those following the recent upsurge in mass copyright litigation matters in the Federal Court of Canada. The plaintiff, Hellboy Productions (“Hellboy”), alleged that unknown individuals had uploaded and shared their film without authorization using the BitTorrent filesharing protocol (para 3). Hellboy could only identify the otherwise anonymous defendants by their Internet Protocol (“IP”) addresses (para 3). Consequently, Hellboy sought a Norwich order, requiring that internet services providers (ISP) disclose the names and addresses of subscribers associated with the IP address (para 2).  

The Federal Court dismissed Hellboy’s motion, finding that Hellboy failed to satisfy the evidentiary and procedural requirements for obtaining a Norwich order. A Norwich order is a form of third-party discovery: it is the procedural tool of choice for unmasking ISP subscribers suspected of unlawful conduct. The Federal Court in ME2 Productions, Inc. v Doe, 2019 FC 214, stated that a Norwich orders permit “extraordinary equitable relief” against non-parties and are therefore subject to “stringent requirements” designed to protect the privacy interests of unidentified individuals (para 129). In Seismotech IP Holdings Inc v Ecobee Technologies ULC, 2024 FCA 205, The Federal Court of Appeal at (para 6) affirmed that a plaintiff must demonstrate that: 

1. a bona fide claim exists against the alleged wrongdoer;  

2. the person from whom discovery is sought is:  

(i) more than an innocent bystander;  

(ii) the only practical source of information available to the plaintiff; and  

(iii) reasonably compensated; and  

3. the balancing of the public interests for and against disclosure favours disclosure. 

Hellboy’s evidence comprised two affidavits: the first of a law clerk with Hellboy’s lawyers [Law Clerk Affidavit] and the second of Thomas Nowak [Nowak Affidavit], CEO of Maverickeye UG, the company monitoring peer-to-peer/BitTorrent networks on Hellboy’s behalf (para 9).  

Under the first branch of the test for a Norwich order, Hellboy failed to demonstrate that it held a bona fide claim against the alleged wrongdoers (para 8). Under the second branch, which concerns the party from whom discovery is sought, Hellboydid not establish that Bell, Telus, or Cogeco were the ISPs for the alleged wrongdoers (para 8). 

In both branches of the test, the Court found Hellboy’s evidence deficient. Justice Cotter first held that the plaintiff could not rely on the section 34.1 presumptions in a Norwich motion and that the law clerk’s affidavit was not “best available evidence”; therefore, Hellboy could not establish subsistence or ownership in copyright (para 30). Justice Cotter then concluded that the Nowak and Law Clerk affidavits did not prove that Telus, Cogeco or Bell were the ISPs for the alleged wrongdoers (para 32). The Court dismissed the motion without considering the remaining branches of the test (para 50-51). 

The Challenges Hellboy Productions Faced in Their Litigation Strategies 

1. Hellboy Mislabels the Case as a Simplified Action (But That Did Not Decide the Motion) 

Justice Cotter held that, despite Hellboy’s “Simplified Action” label, the proceeding did not qualify as a simplified action under Rule 292 of the Federal Courts Rules because it sought injunctive and declaratory relief; as a result, Rules 294–299, including Rule 298, did not apply (para 14). Justice Cotter highlighted that the relief Hellboy sought was injunctive and declaratory, whereas the Rule explicitly limits claims to monetary relief (under 292(a) and (b)) (para 14). Rule 292, not Rule 298, sets out when an action proceeds as a simplified action. It provides that Rules 294 to 299 “apply to any action in which” one of four conditions is met, including that “each claim is exclusively for monetary relief in an amount not exceeding $100,000” and that the parties agree or the Court orders that the action be conducted as a simplified action (Federal Court Rules). 

In practice, a Norwich motion framed against Doe defendants will rarely satisfy Rule 292(c), which requires the parties to agree to conduct the action as a simplified action, because there is no identified opposing party (Federal Court Rules). Justice Cotter does not decide this point; he simply notes that none of Rule 292(b), (c) or (d) is applicable on the facts (para 14). Simply labelling a statement of claim as “Simplified Action” is not sufficient (para 11).   

1. Hellboy Did Not Establish Subsistence and Ownership of Copyright in the Work 

Hellboy’s motion failed to demonstrate that it satisfied the first prong of the test for a Norwich order: that it held a bona fide claim against the alleged wrongdoer. To show a bona fide claim, Hellboy had to provide “some minimal analysis of the merits of the claim,” which in this case included evidence that copyright subsists in the Work and that it owns that copyright (para 18). The evidence consisted only of a law clerk’s statement that Hellboy is “the party who owns the copyright in the film,” plus a screenshot of the credits page; there was no certificate of registration and no direct evidence about the maker of the film or of subsistence of copyright (para 19-21).  

Justice Cotter emphasized that “the court is entitled to demand the best available evidence to be filed in support of a motion seeking the extraordinary equitable relief of a Norwich order” (para 30). As such, he concluded that the Law Clerk Affidavit: (1) failed to demonstrate the subsistence of copyright, (2) amounted to hearsay evidence on the matter of ownership, and (3) was in any event not the best available evidence of copyright ownership (para 30). Given that the evidence failed to establish that copyright subsists in the work, Justice Cotter then considered whether the presumptions respecting copyright and ownership under the Copyright Act could apply. 

Hellboy relied upon the Copyright Act’s presumptions favouring claimants. Section 34.1(1) of the Copyright Act provides that: 

34.1 (1) In any civil proceedings taken under this Act in which the defendant puts in issue either the existence of the copyright or the title of the plaintiff to it, (a) copyright shall be presumed, unless the contrary is proved, to subsist in the work, performer’s performance, sound recording or communication signal, as the case may be; and (b) the author, performer, maker or broadcaster, as the case may be, shall, unless the contrary is proved, be presumed to be the owner of the copyright (Copyright Act) 

In an application for a Norwich order, no defendant is before the court to challenge subsistence or title, and so s. 34.1(1)’s presumptions can never engage. In the absence of probative evidence showing subsistence and ownership of copyright, Justice Cotter ruled that Hellboy could not demonstrate a bona fide claim exists against alleged wrongdoers (para 31). 

2. Any Evidence Tendered for A Norwich Order Should be Organized, Clear, and Easily Verifiable 

The Court was not done there, however. The key paragraph of the Nowak affidavit asserted that MaverickMonitor had traced the IP addresses to particular ISPs, but none of the exhibits identified any ISP (para 38). The Law Clerk Affidavit failed to show that Bell, Telus, or Cogeco were the ISPs of the alleged infringers because the evidence was voluminous and neither organized nor clearly verifiable (para 48-49). Justice Cotter illustrated the challenges of verifying the large amounts of data related to the hundreds of subscribers the Law Clerk Affidavit listed (para 42). He was unable to confirm whether each subscriber’s IP address matched evidence of notices and emails corresponding with each subscriber’s specific ISP (para 42). As a result, the plaintiff had “failed to show that Telus, Cogeco or Bell was the ISP for the alleged wrongdoers” (para 49). Organization and accuracy are necessary to satisfy the Court that the claimant has properly identified the defendants and is not invading the privacy of blameless subscribers.  

Conclusion: Courts Consider Privacy Dimensions of Alleged Copyright Infringement 

Norwich orders sit at the intersection of privacy and copyright. Judges must navigate the tension between these two interests.  

In R v Bykovets, 2024 SCC 6, a majority of the Supreme Court of Canada recognized the significance of an IP address to privacy and declared that a request by the state for an IP address is a search under s. 8  of the Charter. Justice Karakatsanis, writing for the majority, explained [at para. 28] that “[a]n IP address is the crucial link between an Internet user and their online activity…. Viewed normatively, it is the key to unlocking a user’s Internet activity and, ultimately, their identity”.Courts considering Norwich motions often focus on the latter point – identity – without appreciating the first: the deep visibility an IP address provides into a user’s online activity.  

Plaintiffs in mass copyright litigation are not so blinkered. In Voltage Holdings, LLC v. Doe#1, 2022 FC 827, Voltage sought to increase its statutory damages award with evidence of Does’ BitTorrent activity involving films not in court and not owned by Voltage (see paras 75-78). 

When the record is deficient, courts must favour privacy. Justice Cotter’s decision demonstrates that courts will apply stringent evidentiary requirements and demand strict compliance with the Rules before allowing a Norwich applicant to pierce ISP subscriber anonymity.