First Strike Under New Website Blocking Laws

The recent decision of Justice Nicholas of the Federal Court of Australia in Roadshow Films Pty Ltd v Telstra Corporation Ltd¹ is the first time an Australian court has applied the new ‘website blocking’ laws introduced last year by the Copyright Amendment (Online Infringement) Act 2015 (Commonwealth) (Online Access Disabling Provisions).

In applying the Online Access Disabling Provisions, the Federal Court made orders that certain Carriage Services Providers (CSP) disable access to specific online locations that facilitated the infringement of the copyright in films owned or controlled by Roadshow Films Pty Ltd, Village Roadshow Films (BVI) Ltd and Foxtel Management Limited (applicants).²

Website blocking laws

The Online Access Disabling Provisions came into effect on 27 June 2015.

The new laws amended the Copyright Act 1968 (Cth) (Copyright Act) by empowering copyright owners to seek injunctive relief to require a CSP, such as Telstra or Optus, to take steps to disable access to online locations that infringe or facilitate the infringement of copyright.

The Online Access Disabling Provisions are designed to prevent Australian subscribers of CSPs that are subject to an injunction from accessing certain online locations. The laws seek to address the threat to copyright owners due to the ease in which copyright material can be shared and disseminated via the internet.

The introduction of the new online infringement laws follows the enactment of similar legislation in the United Kingdom, Ireland and Singapore.

Section 115A of the Copyright Act allows the Federal Court to make orders requiring a CSP to disable an online location where it can be established:

• the CSP provides access to an online location outside of Australia
• the online location infringes or facilitates infringement of copyright and
• the online location’s primary purpose is to infringe or facilitate infringement of copyright (whether or not in Australia).³

Importantly, section 115A of the Copyright Act provides that copyright owners can apply directly to the Federal Court without having to establish the liability of a CSP for copyright infringement or authorisation of copyright infringement. This ‘no fault’ relief is said to be ‘more efficient’ and a way to ‘avoid implicating CSPs unnecessarily’.⁴

The Court has to apply ‘an intentionally high threshold test’⁵ before making orders to disable infringing online locations. In particular the Court has to consider a number of factors when making an order under the new laws, including:

• the flagrancy of the copyright infringement or its facilitation
• whether disabling access to the online location is a proportionate response in the circumstances
• the impact on any person likely to be affected by the grant of the injunction and
• whether it is in the public interest to disable access to the online location.⁶

Roadshow Films v Telstra

The applicants brought proceedings against Telstra, Optus, M2⁷ and TPG (respondents) seeking orders under the new Online Access Disabling Provisions that the respondents disable access to various online locations including locations known as Solarmovie, The Pirate Bay, Torrentz, TorrentHound and IsoHunt (Target Online Locations).

The owners and operators of the Target Online Locations did not participate in the Federal Court proceedings.

The two main issues contested in the proceedings were:

• whether the scope of any orders made by the Court against the respondents to disable access to online locations could be subsequently extended to domain names, IP addresses and URLs different to those associated with the Target Online Locations and specified in the disabling order, without further order of the Court, by providing written notice to the respondents and
• who would pay the costs associated with complying with the order to disable access to the online locations?

In relation to the first issue, the applicants sought the ability to easily extend the scope of a disabling order to address infringement by the same online location via a different or new domain name, IP address or URL. The applicants asserted that being able to extend the scope of the order by written notice to the respondents was appropriate given the ease with which the operator of a Target Online Location could re-establish a blocked website and the costs and inconvenience involved in further legal proceedings.

The respondents opposed the regime proposed by the applicants and proposed an order whereby the scope of the court orders could be extended by the Court following the applicants filing and serving affidavit material and proposed orders in relation to websites the subject of a Target Online Location with a different domain name, IP address or URL.

The Court preferred the orders proposed by the respondents, noting ‘whether the terms of any injunction should be varied to refer to additional domain names, IP addresses and URL is a matter for the Court to determine in light of the evidence’.⁸ Justice Nicholas also noted that ‘in the case of a variation to an existing injunction, the Court may be willing to act on very little in the way of further evidence.’⁹

In relation to the second issue, the applicants submitted to the Court that because the respondents benefited commercially by providing access to websites which engaged in copyright infringement the respondents should bear the costs of complying with any order to disable access to those online locations.¹⁰

The Court was not persuaded that the respondents had obtained a commercial benefit by providing access to the relevant online locations or to any websites that actively encouraged copyright infringement.¹¹ Instead, Justice Nicholas held that the applicants should pay the respondents’ costs of complying with an order to disable access.¹²

The Court went on to determine a uniform amount for the compliance costs payable by the applicants, calculated by reference to the number of domain names the respondents will be required to block.¹³ His Honour found that the amount of compliance costs in this instance was $50 for each domain name that was to be disabled by the respondents.¹⁴

In summary, the Court made orders in the proceedings to the effect:

• that the respondents, within 15 business days, take steps to disable access to the Target Online Locations
• the respondents disable access to the Target Online Locations for a period of three years and
• the applicants pay the respondents’ compliance costs calculated at the rate of $50 per domain name that is disabled.

Commentary

The Online Access Disabling Provisions give copyright owners and licensees a powerful new weapon in the ongoing fight against online piracy. The introduction of the new laws is consistent with a trend in developed countries of expanding the law to try to protect copyright owners against online infringement.

Roadshow Films v Telstra provides helpful guidance on the application of the Online Access Disabling Provisions. The judgment sets out the matters that must be satisfied and the type of evidence that must be adduced for the Court to grant an injunction to disable access to infringing online locations under the Online Access Disabling Provisions. Further, Justice Nicholas’ decision clarifies the scope of online locations that may be subject to order of the court under the new laws, and indicates the quantum of compliance costs that a successful applicant may have to pay to a CSP to give effect to an injunction.

¹[2016] FCA 1503.
²The judgment relates to two proceedings that were heard together. The first proceeding was brought by Roadshow Films Pty Ltd and Village Roadshow Films (BVI) Ltd. The second proceeding was brought by Foxtel Management Pty Limited.
³Copyright Act 1968 (Cth), s 115A(1).
⁴Explanatory Memorandum to the Copyright Amendment (Online Infringement) Bill 2015 (Cth).
⁵Explanatory Memorandum to the Copyright Amendment (Online Infringement) Bill 2015 (Cth).
⁶Copyright Act 1968 (Cth) s 115A(5).
⁷In relation to the SolarMovie online location only.
⁸[2016] FCA 1503, 137.
⁹[2016] FCA 1503, 139.
¹⁰[2016] FCA 1503, 147.
¹¹[2016] FCA 1503, 147.
¹²[2016] FCA 1503, 147.
¹³[2016] FCA 1503, 148.
¹⁴[2016] FCA 1503, 137.