Late last year, owners of copyright in various films and television programs successfully applied to the Federal Court of Australia for orders requiring a number of Australian internet service providers ("ISPs"), including those within the Telstra, Optus and TPG groups, to take steps to block access to five overseas copyright-infringing sites. The site-blocking injunctions were made pursuant to section 115A of the Copyright Act 1968 (Cth) ("Copyright Act") and are the first of their kind in Australia.
The Court granted the injunctions in two proceedings that were commenced in February 2016 and heard together: Roadshow Films Pty Ltd v Telstra Corporation Ltd  FCA 1503.
Roadshow, Disney, Twentieth Century Fox, Paramount, Columbia, Universal and Warner Bros ("Film Companies") sought an injunction pursuant to s 115A of the Copyright Act requiring certain ISPs to block access to the streaming site SolarMovie. At the same time, the Australian pay-TV company, Foxtel, sought a s 115A injunction requiring many of the same ISPs to block access to four file-sharing sites known as The Pirate Bay, Torrentz, TorrentHound and IsoHunt. None of the operators of the sites at issue applied to be joined as a party to the proceedings or participated in the hearing.
The ISPs did not consent to, or oppose, the grant of the injunctions sought by the Film Companies and Foxtel. They asked only to be heard in relation to the terms upon which any relief under s 115A should be granted and the form of the orders to be made.
Section 115A of the Copyright Act
Section 115A of the Copyright Act came into effect on 27 June 2015. Section 115A(1) provides that a copyright owner can apply to the Federal Court for an injunction requiring an ISP to take reasonable steps to disable access to an online location if the Court is satisfied that:
- The ISP provides access to an online location outside Australia;
- The online location infringes, or facilitates an infringement of, the copyright; and
- The primary purpose of the online location is to infringe, or to facilitate the infringement of, copyright (whether or not in Australia).
The provision provides for a "no fault" remedy against an ISP that does not depend upon establishing that the ISP itself has committed or authorised an infringement of copyright or that the ISP has any knowledge of the copyright infringement.
Under s 115A, the Federal Court has a discretion whether to refuse or grant an injunction. Section 115A(5) provides factors that the Court may take into account in exercising its discretion including, amongst others, the flagrancy of the infringement, whether access to the site has been disabled by orders in another jurisdiction, whether blocking access to the site is a "proportionate response" or is in the public interest, and the impact of an injunction on third parties.
The Court was satisfied that the requirements of s 115A(1) were met in relation to each of the domain names, IP addresses and URLs sought to be blocked ("Target Online Locations") with the exception of six domain names relating to the Pirate Bay, as discussed below.
In reaching its conclusion, the Court found that, for the purposes of s 115A(1)(a), an ISP provides access to an online location if the location was online at the time the proceeding was commenced, even though it may not be online at the time of granting the injunction. The Court said that to find otherwise would be to "deprive the section of much of its usefulness", as it could allow a website operator to avoid an injunction simply by taking a website off-line temporarily during the course of the proceeding. However, the fact that the online location has been disabled by the time of the hearing may be a matter relevant to the exercise of the Court's discretion.
As there was no evidence that six domain names sought to be blocked in relation to the Pirate Bay had been active when the proceedings were commenced or had ever infringed or facilitated the infringement of copyright, the Court refused to grant relief in relation to those particular inactive domain names (although 31 other domain names relating to the Pirate Bay were the subject of a blocking injunction).
The Court determined that the "primary purpose" of each of the five sites sought to be blocked was to infringe or facilitate the infringement of copyright. The Court said that the fact that a particular website merely makes some unlicensed copyright material available online or is routinely used by some users to infringe copyright will not establish the relevant "primary purpose". However, in this case, the Court was satisfied that each of the file-sharing and streaming sites is used or designed to be used for the principal activity of facilitating free and unrestricted access to films and/or television programs made available online without the permission of the copyright owners.
In exercising its discretion to grant relief pursuant to s 115A, the Court noted, in particular, that the five sites positively encouraged the infringement of copyright on a widespread scale or otherwise involved a flagrant disregard of the rights of copyright owners generally and that blocking orders had previously been made in relation to most of the sites in other countries.
The parties were largely in agreement in relation to the form of the orders to be granted. However, there were two main areas of significant disagreement—whether the copyright owners could extend the scope of the injunction to other domain names, IP addresses and URLs relating to the relevant sites without any further order of the Court and the costs that could be recovered by the ISPs.
It was agreed that the ISPs would have 15 days to take reasonable steps to disable access to the specified sites by, at the option of the ISP, blocking or re-routing specified IP addresses, blocking specified URLs and domain names, Domain Name System ("DNS") blocking, or by any alternative technical means for disabling access to the Target Online Locations as agreed in writing between the copyright owners and the ISPs. Users seeking access to the blocked sites are to be redirected to a "landing page" informing them that access to the site has been disabled as a result of the Court determining that it infringes or facilitates the infringement of copyright.
The injunctions are to operate for three years and may be extended by the Court upon application by the copyright owners. There is provision for the owners or operators of the blocked sites, or any other sites claiming to be affected by the orders, to apply to vary or discharge the orders on three days' written notice.
The copyright owners had sought a form of "rolling" order, which would have permitted them to extend the scope of the injunctions to include other domain names, IP addresses and URLs relating to the subject sites, which were not covered by the orders made by the Court, simply by providing written notice to the ISPs. However, the Court favoured the approach contended for by the ISPs, which was to make any extension or variation of the injunction subject to the approval and order of the Court in light of evidence.
The copyright owners also proposed that the ISPs bear their own costs of complying with the injunctions, whereas the ISPs sought orders for the payment of their costs of complying with the injunctions. The Court held that it was reasonable for the copyright owners to pay the ISPs' compliance costs in the amount of AU $50 per domain name.
In addition, Telstra sought costs it incurred shortly after the introduction of s 115A in configuring its various systems to facilitate compliance with any order that might be made under that section. The Court refused to grant Telstra its "set up" costs, which had already been incurred and which were, in the Court's opinion, a general "cost of carrying on business" that Telstra would have had to incur at some stage irrespective of the existence of the current proceedings.
The decision in these two cases is of considerable importance for rights holders in providing the first guidance on the Court's approach to applications for site-blocking injunctions pursuant to s 115A and the kinds of orders that may be made as a result.
A third application for a site-blocking injunction brought by record companies in relation to the "KickassTorrents" file-sharing site was heard in October 2016. The decision in that case is currently pending.
The Australian government has previously committed to review the operation of s 115A in or around mid-2017 to assess its effectiveness in addressing the problem of online copyright infringement.
Matthew J. Whitaker, a law clerk in the Sydney Office, assisted in the preparation of this Commentary.
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