FEDERAL COURT OF AUSTRALIA

Roadshow Films Pty Limited v Telstra Corporation Limited [2018] FCA 582

ORDERS

In these orders, the following terms have the following meanings:

(a)    Domain Name means a name formed by the rules and procedures of the Domain Name System (DNS) and includes subdomains.

(b)    DNS Blocking means a system by which any user of a Respondent's service who attempts to use a DNS resolver that is operated by or on behalf of that Respondent to access a Target Online Location is prevented from receiving a DNS response other than a redirection as referred to in Order 5.

(c)    IP Address means an Internet Protocol Address.

(d)    Optus means the fourth to thirteenth respondents.

(e)    Target Online Locations means the online locations as referred to in Schedule 2 and that are or were accessible:

(i)    at the URLs listed in Schedule 2 to this Order (together, the Target URLs);

(ii)    at the IP Addresses listed in Schedule 2 to this Order (together, the Target IP Addresses); and

(iii)    at the Domain Names listed in Schedule 2 to this Order (together, the Target Domain Names).

(f)    Telstra means the first to third respondents.

(g)    TPG means the thirty-second to the forty-ninth respondents.

(h)    URL means a Uniform Resource Locator.

(i)    Vocus means the fourteenth to thirty-first respondents.

THE COURT ORDERS THAT:

1.    The requirement under s 115A(4) of the Copyright Act 1968 (Cth) that the Applicants give notice of their application to the persons who operate the Target Online Locations be dispensed with in so far as any such notice has not already been given.

2.    Each Respondent must, within 15 business days of service of these Orders, take reasonable steps to disable access to the Target Online Locations.

3.    Order 2 is taken to have been complied with by a Respondent if that Respondent implements any one or more of the following steps:

(a)    DNS Blocking in respect of the Target Domain Names;

(b)    IP Address blocking or re-routing in respect of the Target IP Addresses;

(c)    URL blocking in respect of the Target URLs and the Target Domain Names; or

(d)    any alternative technical means for disabling access to the Target Online Location as agreed in writing between the Applicants and a Respondent.

4.    If a Respondent in complying with Order 2 does not implement one of the steps referred to in Order 3, that Respondent must, within 15 business days of service of these Orders, notify the Applicants of the step or steps it has implemented.

5.    Each Respondent must redirect any communication by a user of its service seeking access to the Target Online Locations in Schedule 2, which have been disabled pursuant to Order 2, to a webpage established, maintained and hosted by either:

(a)    the Applicants, or their nominee, pursuant to Order 6; or

(b)    that Respondent or its nominee.

The Applicants’ obligations pursuant to Order 6 and 7 only arise if a Respondent notifies the Applicants that the Respondent will redirect a communication pursuant to Order 5(a) and for so long as at least one Respondent redirects communications to that webpage.

6.    The Applicants, or their nominee, must establish, maintain and host a webpage to which users of a Respondent’s service are to be redirected pursuant to Order 5, which website shall state that access to the online location has been disabled because this Court has determined that it infringes or facilitates the infringement of copyright.

7.    Within 5 business days of these Orders, the Applicants will notify each of the Respondents in writing of the URL of the webpage established, maintained and hosted under Order 6 and, if the webpage ceases to operate for any reason, will notify each of the Respondents in writing of a different URL that complies with Order 6.

8.    If, in complying with Order 5, a Respondent redirects any communication by a user of its service to a webpage established, maintained and hosted by it, that Respondent or its nominee must ensure that the webpage states that access to that online location has been disabled because this Court has determined that it infringes or facilitates the infringement of copyright.

9.    In the event that any of the Applicants has a good faith belief that:

(a)    any Target URL, Target IP Address or Target Domain Name which is subject to these Orders has permanently ceased to enable or facilitate access to a Target Online Location; or

(b)    any Target URL, Target IP Address or Target Domain Name has permanently ceased to have the primary purpose of infringing or facilitating the infringement of copyright,

a representative of the Applicants must, within 15 business days of any of the Applicants forming such a good faith belief, notify each Respondent of that fact in writing, in which case the Respondents shall no longer be required to take steps pursuant to Order 2 to disable access to the relevant Target URL, Target IP Address or Target Domain Name that is the subject of the notice.

10.    A Respondent will not be in breach of Order 2 if it temporarily declines or temporarily ceases to take the steps ordered in Order 2 (either in whole or in part) upon forming the view, on reasonable grounds, that suspension is necessary to:

(a)    maintain the integrity of its network or systems or functioning of its blocking system;

(b)    upgrade, troubleshoot or maintain its blocking system;

(c)    avert or respond to an imminent security threat to its networks or systems; or

(d)    ensure the reliable operation of its ability to block access to online locations associated with criminal content if it reasonably considers that such operation is likely to be impaired, or otherwise to comply with its statutory obligations including under section 313(3) of the Telecommunications Act 1997 (Cth),

provided that:

(a)    unless precluded by law, it notifies the Applicants or their legal representative(s) of such suspension, including the reasons and the expected duration of such suspension, by 5.00 pm on the next business day; and

(b)    such suspension lasts no longer than is reasonably necessary and, in any case, no longer than 3 business days or such period as the Applicants may agree in writing or the Court may allow.

11.    The owner or operator of any of the Target Online Locations and the owner or operator of any website who claims to be affected by these Orders may apply on 3 days' written notice, including notice to all parties, to vary or discharge these Orders, with any such application to:

(a)    set out the orders sought by the owner or operator of the Target Online Locations or affected website; and

(b)    be supported by evidence as to:

(i)    the status of the owner or operator of the Target Online Locations or affected website; and

(ii)    the basis upon which the variation or discharge is sought.

12.    The parties have liberty to apply on 3 days' written notice, including, without limitation, for the purpose of any application:

(a)    for further orders to give effect to the terms of these Orders;

(b)    for further orders in the event of any material change of circumstances including, without limitation, in respect of the consequences for the parties and effectiveness of the technical methods under Order 2; and/or

(c)    for orders relating to other means of accessing the Target Online Locations not already covered by these Orders.

13.    If a Target Online Location is at any time during the operation of these Orders provided from a different Domain Name, IP Address or URL:

(a)    the Applicants may file and serve:

(i)    an affidavit which:

(A)    identifies the different Domain Name, IP Address or URL; and

(B)    states that, in the good faith belief of the deponent, the website operated from the different Domain Name, IP Address or URL is a new location outside Australia for the Target Online Location the subject of these Orders and brief reasons; and

(ii)    proposed short minutes of order to the effect that:

(A)    the definition of Target Online Locations in these orders is amended to include the different Domain Name, IP Address or URL; and

(B)    the time period in Order 2 of these Orders starts to run in relation to the different Domain Name, IP Address or URL upon service in accordance with Order 17(d) of the Orders as made.

14.    These Orders are to operate for a period of 3 years from the date of these Orders.

15.    Six months prior to the expiry of these Orders:

(a)    the Applicants may file and serve:

(i)    an affidavit which states that, in the good faith belief of the deponent, the Target Online Locations continue to have the primary purpose of infringing or facilitating the infringement of copyright; and

(ii)    short minutes of order extending the operation of these Orders for a further 3 year period; and

(b)    the process contained in Order 17 shall apply.

16.    The affidavit referred to in Orders 13 and 15 is to be given by a deponent duly authorised to give evidence on behalf of the Applicants and may be given by their solicitor.

17.    If an affidavit and short minutes of order are filed and served in accordance with Orders 13 or 15:

(a)    within 7 business days, the Respondents must notify the Applicants and the Court if they object to the Orders being made in accordance with the short minutes of order served by the Applicants;

(b)    if any Respondent gives notice of any objection, or the Court otherwise thinks fit, the proceeding will be relisted for further directions;

(c)    if no Respondent gives notice of any objection and the Court does not otherwise require the proceeding to be relisted, then the Court may make orders in terms of the short minutes of order served by the Applicants without any further hearing; and

(d)    the Applicants must serve on the Respondents any such orders made.

18.    The Applicants pay Telstra’s, Optus’, Vocus’ and TPG’s compliance costs calculated at the rate of $50 per Domain Name the subject of DNS Blocking undertaking for the purposes of complying with Order 2.

19.    There be no order as to costs.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

NICHOLAS J:

1    Before me is an application for orders under s 115A of the Copyright Act 1968 (Cth) (“the Act”) requiring each of the respondents to take reasonable steps to disable access to various online locations. The second to eighth applicants are the owners of copyright in various cinematograph films. The first applicant is an exclusive licensee of one of those films.

2    The applicants were also applicants in Roadshow Films Pty Ltd v Telstra Corporation Ltd (2016) 248 FCR 178 (“Roadshow”). Most of the respondents were also respondents in Roadshow.

3    There are 49 respondents in all, each of which is a carriage service provider, and a member of the Telstra, Optus, Vocus (formerly M2) or TGP groups. The respondents have not sought to be heard in the proceeding and submitting appearances have been filed on their behalf. The orders sought by the applicants are to the same effect as those made in Roadshow except that they target different online locations.

4    The affidavit evidence relied upon by the applicants consists of the following affidavits:

    Rodney McKemmish sworn 22 December 2017;

    Rodney McKemmish sworn 9 April 2018;

    Andrew Stewart sworn 1 February 2018;

    Andrew Stewart sworn 10 April 2018;

    Andrew Stewart sworn 12 April 2018;

    Nicholas Kraegen affirmed 1 February 2018; and

    Nicholas Kraegen affirmed 10 April 2018.

5    The uniform resource locator (“URL”), the domain name and the internet protocol address (“IP address”) for each of the online locations in respect of which orders are sought are identified in the Amended Originating Application and will be identified in the schedule to the orders made. With one exception, those online locations are not websites but specific locations from which various files may be downloaded by certain applications that operate on the Android operating system. The only exception is the website at http://hdsubs.com (“the HD Subs website”). All of these online locations are referred to in the Amended Originating Application as the “target online locations” and this is how I shall describe them in these reasons. There are 16 target online locations.

6    The country of registration for the majority of the IP addresses of the target online locations is the Netherlands. The countries of registration for the other target online locations include France, and the United States of America. None of the target online locations appear to be situated in Australia.

7    Mr Stewart and Mr Kraegen are solicitors with Baker & McKenzie who act for the applicants. Mr Stewart’s evidence identifies certain cinematograph films in which copyright is owned by one of the applicants. I do not propose to list the cinematograph films referred to in Mr Stewart’s evidence but they are all commercially released motion pictures and pre-recorded television programs some of which are very well known. Mr Kraegen’s affidavits refer to the efforts made by the applicants’ solicitors to notify the persons who operate the target online locations of the application.

8    Mr McKemmish is a forensic computer expert who has produced reports detailing the functionality provided by the target online locations, how they support the operation of various applications, how those applications facilitate the infringement of the applicants’ copyright in the relevant films and the role the target online locations play in providing online access to those and other cinematograph films by the use of certain set-top boxes.

9    There are three particular applications with which this proceeding is concerned:

    the HD Subs+ App;

    the Upgraded HD Subs+ App; and

    the Press Play Extra App.

10    I shall refer to these collectively as the “HD Subs+ Apps”. According to Mr McKemmish, each of the HD Subs+ Apps are different versions of each other, incorporating the same underlying technology and functionality. Mr McKemmish’s investigations showed that the Upgraded HD Subs+ App and the Press Play Extra App are updated versions of the HD Subs+ App with the same functionality except that, by the time he came to use these apps, the catalogue content had changed. The most significant difference seems to be that the 10 films and 2 television programs referred to in Mr Stewart’s affidavit sworn 1 February 2018 had been removed from the catalogue content of the HD Subs+ Apps. However, a number of other films had been added the copyright in which was also owned by one of the applicants. These additional films are referred to in Mr Stewart’s affidavit sworn 10 April 2018.

11    The HD Subs+ App comes pre-installed on what is known as the X-96 Smart TV Box (“X-96”). The X-96 is a compact electronic device that connects to a TV or video screen and is connected to the internet via either a cable or a wireless connection. It is in essence a mini computer that can run various apps, a web browser and music and video streaming services. It operates on the Android operating system. The X-96 can be controlled by either connecting a keyboard and mouse to the box or by using a remote control unit supplied with it.

12    The HD Subs+ App can also be downloaded from the HD Subs website and installed on other Android devices. It will then automatically upgrade to either the Upgraded HD Subs+ App or the Press Play Extra App.

13    When using the HD Subs+ Apps to stream either TV or video content, a person is required to be registered and have a valid activation code. To obtain this code the user can go to the HD Subs website and purchase a subscription. Once a credit card payment has been made, the activation code is sent to the user by email from the email address sales@hdsubs.com. Once in possession of the activation code, the user follows the prompts, enters the activation code, and is then able to stream content.

14    Once the user’s account is active, the user can select movies or TV shows to stream from a catalogue of content. The movie content available for streaming is organised into various categories including “latest”, “recommended”, “sports”, “premier league”, “TV serial” and “films”. The latter are organised into categories based on year of release. The user can also stream and watch various TV channels including BBC 1, BBC 2, BBC Lifestyle HD, Disney, Disney Junior, EPL Xtra 1, 2 and 3, Fox HD and Nat Geo Wild HD. None of the apps can be used to stream these TV channels or movie content without the user first obtaining an activation code. Evidence from Mr Stewart indicates that the movie content and the TV channel content has been streamed without the consent of the copyright owners.

15    The HD Subs+ Apps communicate via the internet with servers located outside Australia (“Facilitating Servers”) the IP addresses for which are obtained by the HD Subs+ App.

16    The Facilitating Servers perform a number of functions including:

(a)    authenticating users;

(b)    providing electronic program guide (“EPG”) information;

(c)    providing software updates;

(d)    content management that allow retrieval of the IP addresses of the relevant content server that hosts the movie or TV broadcast selected by the user.

17    Content management is provided by content management servers. After connecting to the content management servers, the HD Subs+ App connects to one or more content servers and requests the specific video or TV broadcast. The requested movie or TV broadcast is then streamed from the content servers to the user’s device where it is viewed on the TV or monitor to which it is connected. All of the target online locations play a part in facilitating the delivery of the content to the user’s device. Mr McKemmish says that the HD Subs+ Apps use a combination of Domain Name Service queries and HTTP communications to interact with the various Facilitating Servers. These deliver files that include information required by the HD Subs+ Apps to stream the requested content.

18    The description in paragraphs [12] to [17] was correct up until 12 January 2018. However, by the time of the hearing it was no longer possible to view streamed content using any of the HD Subs+ Apps even though content selected by Mr McKemmish was still being streamed to his X-96. Why this was so is not clear. Mr McKemmish’s evidence, which I accept, indicated that the system is most likely in a state of transition pending another upgrade. The fact that the target online locations may not presently be facilitating the infringement of the applicants’ copyright is a relevant consideration but not one that will necessarily result in the dismissal of the application: see Roadshow at [50]-[54].

19    Section 115A(1) and (2) of the Act provide:

(1)    The Federal Court of Australia may, on application by the owner of a copyright, grant an injunction referred to in subsection (2) if the Court is satisfied that:

(a)    a carriage service provider provides access to an online location outside Australia; and

(b)    the online location infringes, or facilitates an infringement of, the copyright; and

(c)    the primary purpose of the online location is to infringe, or to facilitate the infringement of, copyright (whether or not in Australia).

(2)    The injunction is to require the carriage service provider to take reasonable steps to disable access to the online location.

20    The specific requirements of s 115A(1) of the Act were considered in Roadshow at [35]-[49]. As explained at [46]-[49]:

[46]    […] To the extent s 115A(1)(b) refers to an online location that “infringes copyright” it may be understood as referring to acts comprised within the copyright as defined, in the case of cinematograph films, in s 86 of the Act. Thus, an online location will infringe copyright in a cinematograph film in the sense described in s 115A(1)(b) if the online location performs any of the acts referred to in s 86 without the licence of the copyright owner. These include the act of making available online, or electronically transmitting, a copy of the film. It necessarily follows that s 115A(1) permits the grant of an injunction in circumstances where it is impossible to say who is responsible for operating the online location or determining the content of any material made available online at the online location.

[47]    Even if the online location does not itself infringe copyright, the requirements of s 115A(1)(b) may be satisfied if the online location “facilitates” an infringement of copyright. The language used is deliberately broad. The word “facilitate” means “to make easier or less difficult; help forward (an action or process etc)”: Macquarie Dictionary (6th ed, 2013) at p 525. In determining whether an online location facilitates the infringement of copyright, the Court will seek to identify a species of infringing act and ask whether the online location facilitates that act by making its performance easier or less difficult. An online location may both infringe and facilitate the infringement of copyright by making an electronic copy of a work or other subject matter available online for transmission to users. But it may also facilitate the infringement of copyright merely by making it easier for users to ascertain the existence or whereabouts of other online locations that themselves infringe or facilitate the infringement of copyright.

[48]    The requirement that the online location have as its primary purpose copyright infringement or the facilitation of copyright infringement provides an important check on the operation of s 115A. Thus, the fact that a particular website makes some unlicensed copyright material available online or is routinely used by some users to infringe copyright does not establish that the primary purpose of the website is to infringe or facilitate the infringement of copyright. […]

[49]    The purpose of the online location may be ascertained by a consideration of the use that is or may be made of it. If the Court is satisfied that the principal activity for which the online location is used or designed to be used is copyright infringement or the facilitation of copyright infringement, then it will be open to conclude that the primary purpose of the online location is to infringe, or to facilitate the infringement of, copyright.

21    The target online locations contribute functionality to a subscription based online service (“the HD Subs service”) that facilitates the electronic transmission of films and television broadcasts in which copyright subsists, without the licence of the copyright owners. The target online locations facilitate such infringements by providing updates, authenticating users or providing EPG information for the HD Subs service. This appears to be their sole function. In the case of the HD Subs website, it provides the HD Subs+ Apps, processes payments, and provides activation codes that enable a user to access the HD Subs service. Again, this would appear to be its sole function.

22    Based on the evidence before me, I am satisfied that:

    the respondents have provided access to the target online locations each of which is located outside Australia;

    each of the target online locations have facilitated the infringement of the applicants’ copyright; and

    the primary purpose of each of the target online locations is to facilitate the infringement of copyright.

I am satisfied that the power to make orders under s 115A in respect of the target online locations is enlivened.

23    In my view the applicants have taken reasonable steps to notify the operators of the target online locations of this application and it is appropriate to make an order dispensing with the requirement to give notice in accordance with s 115A(4)(b) to the extent that such notice has not already been given.

24    On the question of the discretion to make orders under s 115A, it is apparent from the evidence that the target online locations have facilitated the infringement of copyright in cinematograph films and television broadcasts on a widespread scale. This facilitation of the infringement of the copyright is flagrant and demonstrates a disregard by the operators of the service for the rights of copyright owners.

25    The evidence indicates that the making of orders under s 115A in respect of the target online locations will not have any impact on the use of the X-96 boxes except with respect to the streaming of copyright material using the HD Subs+ Apps.

26    I consider this is an appropriate case in which to make the orders under s 115A sought by the applicants.

27    Orders accordingly.

Associate:

Dated:    27 April 2018

SCHEDULE OF PARTIES