Equitable Bill of Discovery Requirements
(a) the applicant must establish a prima facie case against the unknown alleged wrongdoer;
(b) the person from whom discovery is sought must be in some way involved in the matter under dispute, he must be more than an innocent bystander;
(c) the person from whom discovery is sought must be the only practical source of information available to the applicants;
(d) the person from whom discovery is sought must be reasonably compensated for his expenses arising out of compliance with the discovery order in addition to his legal costs;
(e) the public interests in favour of disclosure must outweigh the legitimate privacy concerns.
(f) With respect to criterion (a) of the equitable bill of discovery requirements, the motions Judge found that the affidavits were also deficient in that they did not establish a prima facie case of infringement of copyright. In this connection the motions Judge embarked upon a consideration of whether there had been an infringement of copyright. He said inter alia, at paragraphs 25-29:
Thus, downloading a song for personal use does not amount to infringement. See Copyright Board's Private Copying 2003-2004 Decision, 12 December, 2003, at page 20.
No evidence was presented that the alleged infringers either distributed or authorized the reproduction of sound recordings. They merely placed personal copies into their shared directories which were accessible by other computer users via a P2P service.
As far as authorization is concerned, the case of CCH Canadian Ltd. v. Law Society of Upper Canada, [2004] 1 S.C.R. 339, established that setting up the facilities that allow copying does not amount to authorizing infringement. I cannot see a real difference between a library that places a photocopy machine in a room full of copyrighted material and a computer user that places a personal copy on a shared directory linked to a P2P service. In either case the preconditions to copying and infringement are set up but the element of authorization is missing.
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The mere fact of placing a copy on a shared directory in a computer where that copy can be accessed via a P2P service does not amount to distribution. Before it constitutes distribution, there must be a positive act by the owner of the shared directory, such as sending or the copies or advertising that they are available for copying. No such evidence was presented by the plaintiffs in this case. They merely presented evidence that the alleged infringers made copies available on their shared drives. The exclusive right to make available is included in the World Intellectual Property Organization: WIPO Performances and Phonograms Treaty, Geneva, December 20, 1996, however that treaty has not yet been implemented in Canada and therefore does not form part of Canadian copyright law.
Lastly, while the plaintiffs allege that there was secondary infringement contrary to s. 27(2) [as am. by S.C. 1997, c. 24, s. 15] of the Copyright Act, they presented no evidence of knowledge on the part of the infringer. Such evidence of knowledge is a necessary condition for establishing infringement under that section.
(g) The motions Judge found that the plaintiffs met the requirements of criterion (b) of the equitable bill of discovery principles relating to the involvement of the ISPs.
(h) With respect to criterion (c), the motions Judge found that he was not satisfied that the information could not have been obtained from the operators of the Web sites named (i.e. KaZaA, et al.).
(i) With respect to criterion (d), the respondents would have to be compensated for their expenses if an order were granted.
(j) Finally, with respect to criterion (e), because of the age of the data and its consequent unreliability, the privacy interests of the 29 persons outweighed the public interest concern in favour of disclosure.