Copyright notice and notice: the Voltage Pictures Case

The Federal Court of Appeal released an important decision comprehensively reviewing the notice and notice regime in the Copyright Act (the “N&N regime”) in Voltage Pictures v. Robert Salna 2025 FCA 131. A central issue in the case was whether Voltage could use the N&N regime to serve certification notices under its proposed reverse copyright class action against Internet subscribers accused of sharing movies over BitTorrent. The Court of Appeal affirmed the certification judge’s opinion that notices of certification were not a notice of claimed infringement under the regime and internet service providers had no obligation to forward them. In reaching this conclusion the court gave valuable guidance on what type of notices are subject to the N&N regime and which are not and on what types of content cannot be contained in a notice of claimed infringement. Further, in providing reasons for finding that the N&N regime provisions should be narrowly construed the Court of Appeal also stated that the effect of the 2012 amendments to the Copyright Act also insulated ISPs from liability for authorization.

Background

The NN regime was summarized by the Court of Appeal as follows:

[7] The notice-and-notice regime contained in the Copyright Act allows a copyright owner to require internet service providers (ISPs) and other digital service providers to forward notices to subscribers of a claimed online infringement of the owner’s copyright in a work that subscribers share online. The notice-and-notice regime was adopted in 2012 via the Copyright Modernization Act, S.C. 2012, c. 20 as part of a suite of amendments to the Copyright Act which sought to modernize the Canadian copyright regime to, among other things, “address the challenges and opportunities of the Internet” (Copyright Modernization Act, Summary). [8] Under the notice-and-notice provisions, set out in sections 41.25 to 41.27 of the Copyright Act, copyright holders who believe that their copyright in a work has been violated via an online sharing may send a notice of the claimed violation to the ISP or other digital service provider that operates the network over which the violation is alleged to have occurred. Upon receipt of the notice, the service provider is required to forward the notice to the subscriber of the account identified by the copyright owner as being the account used to allegedly violate their copyright. The service provider must also retain information about the subscriber for six months after receipt of the notice from the copyright holder, or if litigation is commenced in respect of the alleged violation, for one year from receipt of the notice from the copyright holder.

Section 41.25(2) sets out the form and content of notices:

(2) A notice of claimed infringement shall be in writing in the form, if any, prescribed by regulation and shall (a) state the claimant’s name and address and any other particulars prescribed by regulation that enable communication with the claimant; (b) identify the work or other subject-matter to which the claimed infringement relates; (c) state the claimant’s interest or right with respect to the copyright in the work or other subject-matter; (d) specify the location data for the electronic location to which the claimed infringement relates; (e) specify the infringement that is claimed; (f) specify the date and time of the commission of the claimed infringement; and (g) contain any other information that may be prescribed by regulation.

Voltage commenced a reverse class action proceeding to certify a class action against BitTorrent users who allegedly infringed Voltage’s rights in motion pictures. Rather than try to identify and serve class members with certification notices using information obtained in Norwich orders, Voltage had proposed to forward certification notices by sending them as “notices of claimed infringement” using the N&N regime. This was opposed by the defendant and by two sets of intervenors, internet service providers (ISPs) and CIPPIC, a public interest advocacy organization. The defendant, Robert Salina,  and intervenors also argued that class certification was not the preferential procedure to advance the infringement claims. The court agreed with both arguments.

Purpose of the notice and notice regime

In reaching the conclusion that notices of certification were not notices that could be sent under the N&N regime the court gave valuable guidance on what types of notices ISPs (and others) could be required to forward. The court interpreted the regime using the modern principle of statutory construction by examining the text, context, and purpose of the regime including its legislative history. It concluded that the N&N regime must to be interpreted narrowly and in accordance with the purpose of the regime. In this regard, the court held that the primary purpose of the N&N regime was to deter infringement. It cannot be used as a litigation tool or as part of a process to enforce copyright claims or to obtain damages for copyright infringement. It was also not intended to be weaponized to further questionable mass litigation practices as seen in the United States. Given the function of class action certification notices and the limited purposes of the N&N regime, the regime could not be used to serve certification notices as part of Voltage’s class action.

Is a subscriber of an internet account liable for copyright infringement?

The court also rejected that the proposed class action was the preferential procedure. The court followed the decision in Voltage Holdings, LLC v. Doe #1, 2023 FCA 194 that without proof of direct infringement or a sufficient relationship between the subscriber and the infringer a claim for authorizing infringement cannot be made out. This meant that establishing infringement would be an individual and not a common issue in the litigation. As a result, the class proceeding was not the preferential procedure and certification of Voltage’s class action was therefore denied.

What content cannot be included in notices

Section 41.25(3)  of the Act prohibits the following content from being included in notices of claimed infringement:

Prohibited content (3) A notice of claimed infringement shall not contain (a) an offer to settle the claimed infringement; (b) a request or demand, made in relation to the claimed infringement, for payment or for personal information; (c) a reference, including by way of hyperlink, to such an offer, request or demand; and (d) any other information that may be prescribed by regulation.

Voltage’s draft certification notices proposed class members “should contact the respondent class lawyers to provide evidence of ceasing infringement by emailing them at [the email address for counsel] or by calling them at [the phone number for counsel]”. The notice further warned that “if you do not contact class counsel this may be used as evidence against you in court”. To comply with this request, putative class members would have had to reveal personal information, if only their email addresses or telephone numbers. In all likelihood, class counsel would also have wanted their names and additional contact information.  The court held that this request in notices would have violated Section 41.25(3), even if the request was to provide personal information to third parties.

The court also held that Voltage’s proposed class proceeding was also a request for payment of statutory damages. The description of the proceeding and inclusion of a hyperlink in the proposed notice through which proposed class members could obtain a copy of the pleadings, could “well constitute “a request or demand … for payment’, within the meaning of subsection 41.25(3) of the Copyright Act.

ISP safe harbors clarified

In providing reasons for why the N&N regime was to be construed narrowly, the Court of Appeal also stated its concision was reinforced by the context of the N&N regime in the Copyright Act. Specifically, it stated that “in enacting the notice-and-notice regime in the Copyright Modernization Act, Parliament at the same time insulated ISPs from liability for authorization in section 31.1 of the Copyright Act.”

This statement by the Court of Appeal is a significant judicial interpretation of the ISP safe harbours that were introduced in 2012 to insulate ISPs where they act as network service or hosting providers and information location tools e.g. search engines. Prior to the amendments made as part of the Copyright Act, under the Supreme Court of Canada  decision in the SOCAN Tariff 22 case, the court held that “copyright liability may well attach if the activities of the Internet Service Provider cease to be content neutral, e.g. if it has notice that a content provider has posted infringing material on its system and fails to take remedial action.” That statement was consistent with the liability of persons for other tortious activity such as defamation where a failure to take down or disable access on becoming aware of its delictual character can lead to liability, as recently illustrated in I Buy Beauty LLC v Dong, 2024 BCSC 815.

• The ISPs were represented in the proceeding by McCarthy Tetrault (Steven Mason, Barry Sookman, Richard Lizius, and Kendra Levasseur).

First published on barrysookman.com.