Australia: Federal Court Of Australia Orders First Site-Blocking Injunctions To Reduce Online Copyright Infringement

Last Updated: 3 February 2017
Article by Chantal Savage

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.

Background

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 [2016] 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:

  1. The ISP provides access to an online location outside Australia;
  2. The online location infringes, or facilitates an infringement of, the copyright; and
  3. 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 Decision

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 Orders

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.

Conclusion

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.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.