Australia: No safe harbour: Online platforms face choppy waters when it comes to copyright infringement

The liability of internet intermediaries for copyright infringement is a hot topic of conversation at the moment, both in Australia and overseas. Sweeping reforms have just been passed by the EU Parliament, and Australian copyright legislation in this area has been the subject of significant judicial consideration in recent years.

In this article, we consider the outcome of two recent copyright infringement cases brought against the Australian online marketplace Redbubble, which may help (somewhat) clarify the extent to which such platforms are likely to be held liable for the actions of their users, what this liability means in practice, and how they can operate to minimise these risks.

Whose infringement is it anyway?

Currently, online content platforms in Australia can be held liable for copyright infringement in user-generated content in a number of ways. These include:

  • direct infringement, for example, if the platform is "reproducing" infringing content or "communicating" it to the public, under section 36 of the Copyright Act 1928 (Cth) (the Act). Section 22(6) of the Act states that "a communication...is taken to be made by the person responsible for determining the content of the communication";
  • for taking certain action in respect of infringing copies (such as exhibiting them in public commercially or offering them for sale or hire) under Part V, Division 5, Subdivision C of the Act. These provisions may apply to online marketplaces displaying consumer goods like t-shirts or mugs bearing infringing content; and
  • indirect infringement, if the platform is deemed to have "authorised" the infringing conduct of its users. Authorisation will depend on factors such as the platform's ability to prevent infringement, the contractual relationship between the platform and its users, and whether the platform takes reasonable steps to prevent infringing conduct.

There are 'safe harbour' provisions in Part V Division 2AA of the Act. However, these only apply to carriage service providers, and not internet service providers (ISPs) more generally, so cannot be relied upon by online content platforms to avoid liability. Further, the Court's broad interpretation of both direct and authorisation liability in recent years (as indicated by the two cases discussed below) has increased the risks for ISPs who cannot avail themselves of the safe harbour provisions.

Gotta catch 'em all: Pokémon v Redbubble

Pokémon Company International, Inc. v Redbubble Ltd involved an action by the owners of various Pokémon characters against the online marketplace Redbubble. Redbubble works by allowing artists to upload images that can be printed onto consumer products such as t-shirts by third party fulfillers upon receipt of orders from customers.

In this instance, users had uploaded unauthorised derivative images of the famous Pikachu character in various poses and costumes. The Pokémon Company sued Redbubble both for copyright infringement, and under the Australian Consumer Law, for making misleading representations that the images in question were authorised by the Pokémon Company.

In addition to finding against Redbubble on the consumer law question, the Court found that Redbubble engaged in three forms of copyright infringement, as follows:

  • direct infringement under section 36 of the Act, by communicating the infringing works to the public;
  • knowingly exhibiting infringing articles in public commercially, under section 132AG of the Act; and
  • indirect infringement by authorising the reproduction of copyright material through the manufacture and sale of infringing articles by the fulfillers.

At the time, Redbubble already had in place a number of measures to minimise the risks of copyright infringement. These included requiring that the users agree that they owned (or had permission to use) the copyright in any works uploaded to the site, systems allowing copyright owners to notify Redbubble of infringing content then promptly removing such content, a content team monitoring the accounts of users who had been flagged in the past, and blocking certain keywords as search terms.

However, these measures were insufficient to shield Redbubble from liability. In particular, the Court noted that Redbubble had not taken all the avenues available to it to prevent the uploading of infringing conduct. For example, Redbubble had chosen not to implement blanket keyword blocks on trade mark terms (such as "Pikachu"), for fear that this would also block legitimate content such as parodies, which would fall within the fair dealing defence to copyright infringement.

Ultimately though, it was something of a pyrrhic victory for the Pokémon Company, as the Court awarded only nominal damages of AU$1. This was because the Pokémon Company failed to demonstrate any actual harm (the Court found that the relevant products would not, but for the infringing actions, have been sold by the Pokémon Company itself) and Redbubble's actions were not in flagrant disregard of the Pokémon Company's rights, so additional damages were not appropriate. The Court also declined to award an injunction, as Redbubble had already blocked the trade marks as search terms.

Nevertheless, presumably in view of the potentially more wide-reaching consequences of the decision, Redbubble filed an appeal in early 2018 and the Pokémon Company cross-appealed. However, the appeal was stayed until the decision in the Hells Angels case, discussed further below, was handed down.

Come hell or high water: Hells Angels v Redbubble

The case of Hells Angels Motorcycle Corporation (Australia) Pty Limited v Redbubble Limited, in which a decision was handed down just last month, revolved around the alleged misuse of the Hells Angels' well-known and fiercely guarded "death head" symbol on the Redbubble site. Hells Angels sued on various grounds, including trade mark infringement, copyright infringement and misleading and deceptive conduct under the Australian Consumer Law (although the latter ground was not ultimately pursued).

The copyright infringement claim failed, but not for the reason Redbubble hoped: Hells Angels could not prove ownership in the relevant works. However, the Court noted that if Hells Angels had been able to establish title to copyright, Redbubble would have been found liable for infringement.

In coming to this conclusion, the Court noted that while the users (many of whom are outside Australia) were responsible for uploading the infringing images, Redbubble was also a primary infringer. The Court found that Redbubble "communicated" the infringing content to the public, because it determined the content of the communication by facilitating the upload of content to its site, the review of that content by consumers, and the fulfilment of orders made through the site. The Court also noted, without providing detailed reasons, that it would also have found Redbubble liable for authorising the infringing conduct of users. These comments carry no precedential weight because of the threshold finding on copyright ownership, but are a useful indication of the Court's broad interpretation of liability for infringement by online platforms.

Hells Angels were only marginally more successful on the trade marks front. Although the Court found three instances of trade mark infringement, again, only nominal damages of AU$5,000 were awarded. This reflected the fact that only a handful of products bearing the infringing marks were ever sold. Again, the Court declined to award exemplary damages. This may indicate that Redbubble's existing policies, which allow it to relatively quickly identify and remove infringing content, while not shielding it from liability altogether, may assist in limiting the likelihood of further damages being awarded against it, even where infringement is found.

Where to from here?

The deadline for either party to appeal the Hells Angels decision has now passed without action, meaning the appeal of the Pokémon case will now resume.

Should the trial judge's decision be upheld on appeal, this may have serious consequences for the way that Redbubble (and other online marketplaces and content distribution platforms more generally) conduct their businesses. For both rights holders and online platforms, it's a case of watch this space!

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
Georgina Hey
Similar Articles
Relevancy Powered by MondaqAI
 
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”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions