Australia: First site-blocking orders in relation to sites facilitating film copyright infringement, made by Federal Court of Australia

Last Updated: 22 December 2016
Article by Duncan Longstaff and Katrina Crooks

The Federal Court of Australia (Nicholas J) has delivered an historic judgment ( Roadshow Films Pty Ltd v Telstra Corporation Ltd [2016] FCA 1503 (15 December 2016)), making orders pursuant to new "site-blocking" provisions under section 115A of the Copyright Act 1968 (Cth) (Act) requiring Australian carriage service providers (CSPs) to block numerous domain names relating to prominent websites facilitating copyright infringement: "The Pirate Bay", "Torrentz", "TorrentHound", "IsoHunt" and "SolarMovie".

The judgment of Nicholas J provides reasons in support of similar orders made in two sets of proceedings, in which site-blocking orders were sought by movie companies Roadshow Films, Disney, Twentieth Century Fox, Paramount, Columbia, Universal and Warner Bros (Roadshow proceeding) and by pay television company Foxtel (Foxtel proceeding). With one exception, the respondent CSPs were the same in both proceedings, including companies from the Telstra, Optus, TPG, Virgin, TransACT, AAPT, Adam Internet and Internode corporate groups. The applicants in each proceeding alleged that the relevant websites are situated outside Australia and that they infringe, or facilitate the infringement of, copyright in large numbers of cinematograph films including motion pictures and television programs the copyright in which is owned by various applicants.

Section 115A of the Act took effect from 27 June 2015. It empowers copyright owners to apply to the Federal Court of Australia for injunctions requiring CSPs to take reasonable steps to disable access to online locations (domain names, websites, databases) where the Court is satisfied that the primary purpose of the online location is to infringe, or to facilitate the infringement of, copyright. The copyright owner is required to notify both the affected CSPs and the persons operating the affected online locations of the injunction application and the Court may take into account matters such as the flagrancy of infringement, the scale on which infringement is facilitated, the proportionality and likely impacts on third parties of an injunction, and other remedies available under the Act (eg, damages or account of profits).

Nicholas J noted that here had been a large measure of co-operation between the applicants and the respondent CSPs. The CSPs neither consented to nor opposed the grant of injunctive relief and only sought to be heard in relation to the form of orders and the terms upon which any relief under section 115A should be granted. Nicholas J was satisfied that it was appropriate to grant an injunction under section 115A of the Act in each proceeding and to make various ancillary orders relating to its implementation. Nevertheless, as this was the first judgment granting a section 115A site-blocking injunction, the judgment of Nicholas J sets out in detail the content and application of the relevant law, in light of the evidence adduced and the orders made, with respect to each CSP and each online location blocked.

One point of contention regarding the form of orders was the applicants' proposed order 12, permitting them to extend the scope of proposed order 1 to domain names, IP addresses and URLs that are not presently specifically referred to by giving written notice to the CSP respondents without any further order of the Court. Nicholas J preferred the CSP respondents' proposed order 12, which requires the applicants to file with the Court an affidavit regarding any further domain names, IP addresses and URLs and short minutes extending the site-blocking orders accordingly.

Nicholas J confirmed that the relief that may be granted under s 115A consists of an injunction against a CSP requiring it "to take reasonable steps to disable access to the online location". This is the sole relief provided for in section 115A(2) although it is also open to the Court to grant its injunction conditionally or by the imposition of terms requiring the applicant, for example, to indemnify (in whole or part) a CSP against whom the injunction is sought, or to provide security for a CSP's costs of complying with an injunction granted pursuant to section 115A.

Telstra sought to recover costs it incurred in configuring its various systems to facilitate compliance with any site-blocking order. Nicholas J refused to order the applicants to pay such "set-up costs", describing them as a "general cost of doing business" because "it is not merely desirable but, practically speaking, essential that a CSP possess the technical capacity to comply with an injunction in the form agreed in these proceedings", including upon the application of different copyright owners.

All CSP respondents sought orders for the payment by the applicants of their costs of complying with the site-blocking orders, such as making the necessary entries in their DNS blocking systems to ensure that DNS blocking of the designated domain names is achieved. As each of the CSP respondents proposed to use DNS blocking, Nicholas J considered it appropriate to settle upon a uniform amount for compliance costs calculated by reference to the number of domain names that the CSP respondents will be required to block. This amount was $50 per domain name.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

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Authors
Duncan Longstaff
Katrina Crooks
 
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