FEDERAL COURT OF AUSTRALIA

Roadshow Films Pty Ltd v iiNet Limited (No. 2) [2009] FCA 1391

PRACTICE AND PROCEDURE – Interveners – Application sought for leave to intervene – whether problematic for intervener to side with one party – whether contribution of the Internet Industry Association would be ‘useful and different’ to that already provided by parties to the proceeding – comparison between submissions of Internet Industry Association and closing submissions of the respondent – whether sufficient to constitute ‘useful and different’ for intervener to approach proceeding from a ‘broader perspective’ than provided by a party – O 6 r 17 Federal Court Rules  

WORDS AND PHRASES - ‘useful and different’

Copyright Act 1968 (Cth) s 112E, Part V Division 2AA

Copyright Amendment (Digital Agenda) Bill 1999 (Cth)

Copyright Amendment (Digital Agenda) Act 2000 (Cth)

Federal Court Rules O 6 r 17

Telecommunications Act 1997 (Cth)

US Free Trade Implementation Act 2004 (Cth)

Australian Securities & Investments Commission v Citigroup Global Markets Australia Pty Ltd (No. 3) [2007] FCA 393 considered

Breen v Williams (1994) 35 NSWLR 522 considered

IceTV Pty Limited & Anor v Nine Network Australia Pty Limited [2008] HCA Trans 356 considered

Sharman Networks Limited and Others v Universal Music Australia Pty Limited and Others (2006) 155 FCR 291 referred to

ROADSHOW FILMS PTY LTD (ACN 100 746 870) and THE PARTIES IN THE ATTACHED SCHEDULE 1 v IINET LIMITED (ACN 068 628 937)

NSD 1802 of 2008

COWDROY J

26 NOVEMBER 2009

SYDNEY

THE COURT ORDERS THAT:

1.                  The application by the Internet Industry Association to intervene in the proceedings pursuant to Amended Notice of Motion dated 24 November 2009 be dismissed.

2.                  There be no order as to costs.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using eSearch on the Court’s website.

REASONS FOR JUDGMENT

1                     By Amended Notice of Motion dated 24 November 2009 the Internet Industry Association (‘the IIA’) seeks leave pursuant to O 6 r 17(1) of the Federal Court Rules (‘the Rules’) to intervene in these proceedings to the extent of making oral and written submissions. Pursuant to a previous order of the Court, written submissions in support of the application and written submissions providing the detail of the submissions sought to be made by the IIA, dated 17 September 2009 and 11 November 2009 respectively, have been supplied to the Court and to the parties.

2                     The application is opposed by the applicants and the respondent (‘iiNet’) adopts a neutral position.

3                     The Amended Motion is supported by an affidavit of Peter Coroneos, the Chief Executive Officer of the IIA, sworn on 10 September 2009. The applicants rely upon an affidavit of Sophia Leila Finter sworn 16 September 2009. During the hearing of the Motion, Mr Coroneos was cross-examined upon the contents of his affidavit.

IIA SUBMISSIONS

4                     In support of its motion to intervene, the IIA submits that the proceedings raise significant questions of law concerning the following:

(a)     the interpretation of section 112E of the Copyright Act 1968 (Cth) (Copyright Act) which relates to the authorisation of infringement by use of certain facilities;

(b)     what constitutes “reasonable steps” for an ISP to prevent or avoid the doing of infringing acts under section 101 of the Copyright Act;

(c)     the meaning of “repeat infringer” under section 116AH of the Copyright Act;

(d)     the significance of “a person” infringing copyright under section 101 of the Copyright Act; and

(e)     the interpretation of 116AH(2) of the Copyright Act regarding any requirement on a carriage service provider to monitor its service, including by reference to the interpretation and effect of section 276 of the Telecommunications Act 1979 (Cth).

5                     The IIA submits that the proceedings constitute a ‘test case’, being the first time Part V Division 2AA of the Copyright Act 1968 (Cth) (‘the Copyright Act’) (‘the safe harbour provisions’) will be considered in detail.

6                     In support of its application to intervene, the IIA firstly submits that because of its experience, it can provide unique assistance to the Court. This experience is said to come from its role as representative for 140 members who are engaged in the internet industry in Australia and its role as Australia’s national representative of the internet industry. It has provided assistance to government in respect of policy issues affecting the internet industry and has developed several industry codes that apply to such industry.

7                     Secondly, the IIA submits that it has ‘first hand knowledge’ of the manner in which the safe harbour provisions are intended to operate. Such knowledge is said to arise because the IIA was involved in the formulation of the safe harbour provisions when the US-Australia Free Trade Agreement was under negotiation culminating in the US Free Trade Agreement Implementation Act 2004 (Cth), such Act being the source of the amendment to the Copyright Act inserting the safe harbour provisions. Mr Coroneos also claims to have been personally involved in the formulation and negotiation of such provisions.

8                     Thirdly, it is submitted that the IIA can offer assistance in respect of a range of policy issues concerning the formulation of the safe harbour provisions; how the industry has interpreted and applied such provisions since its incorporation; the consequence of the submissions of the applicants upon the internet industry and internet consumers; and the technical infrastructure, standards and operation of the internet.

9                     The IIA has also submitted that it was acknowledged in the Revised Explanatory Memorandum to the Copyright Amendment (Digital Agenda) Bill 1999 (Cth)as being an important contributor to the formulation of that Bill which became the Copyright Amendment (Digital Agenda) Act 2000 (Cth). Such Act inserted into the Copyright Act, among other things, s 112E which is an important provision under consideration in these proceedings. In short, the IIA submits that it is ‘in a position to advance useful submissions in the public interest on the proper construction of certain provisions of the Copyright Act’ (see Sharman Networks Ltd and Others v Universal Music Australia Pty Limited and Others (2006) 155 FCR 291 at [14].)

10                  It appears from the submissions dated 11 November 2009 that the IIA’s final submissions are primarily directed towards four aspects of the proceedings before the Court: the interpretation of s 112E of the Copyright Act; what effect (if any) the AFACT notices should have on an internet service provider’s (‘ISP’) liability for copyright infringement; whether such notices should lead to the termination and/or suspension of customer accounts; and the correct interpretation of the safe harbour provisions.

11                  The IIA emphasises that it does not seek to interfere in the conduct of the proceedings and that because of the limited intervention it seeks it would not disrupt the conduct of the proceedings. It states that should the leave to intervene be granted, it would not seek to make any further oral and written submissions than those already before the Court.

REQUIREMENTS OF ORDER 6 RULE 17 OF THE RULES

12                  Order 6 rule 17 of the Rules relevantly provides:

Interveners

(1)     The Court, at any stage of a proceeding, may give leave to a person (the intervener) to intervene in the proceeding, on the terms and conditions, and with the rights, privileges and liabilities (including liabilities for costs), determined by the Court.

(2)     In deciding whether to give leave, the Court must have regard to:

         (a)   whether the intervener's contribution will be useful and different from the contribution of the parties to the proceeding; and

         (b)   whether the intervention might unreasonably interfere with the ability of the parties to conduct the proceeding as they wish; and

         (c)   any other matter that the Court considers relevant.

(3)     The role of the intervener is solely to assist the Court in its task of resolving the issues raised by the parties.

(4)     …

(5)     …

13                  Order 16 rule 17(2)(a) of the Rules requires that the intervener’s contribution be ‘useful and different’ from the assistance otherwise given by the parties. The applicants have submitted that the submissions which the IIA would rely upon if granted leave to intervene duplicate the submissions already made by iiNet and accordingly there is no utility in granting leave for the IIA to intervene. Mr Coroneos, in his cross-examination, acknowledged that he had not personally compared the submissions of the IIA to those provided by iiNet given that the final submissions of the IIA were drafted before the final submissions of the parties. Mr Coroneos acknowledged his understanding that to be granted leave to intervene it was necessary for the IIA to provide a different contribution to that already provided by the parties to the proceeding. However, he was not able to identify any specific subject matter in the IIA’s submissions which was different to iiNet’s submissions.

14                  The IIA has referred the Court to several authorities in support of its submissions. IceTV Pty Limited & Anor v Nine Network Australia Pty Limited [2008] HCATrans 356 was one, wherein the High Court of Australia granted leave to interveners on the ground that the Court ‘may be assisted’ by them (per French CJ). Reliance is also placed upon the decision of Kirby P in Breen v Williams (1994) 35 NSWLR 522 at 533 in which the President said:

The courts should not turn a blind eye or a deaf ear to the assistance that they might receive from amicus curiae on matters of principle in test cases.

FINDINGS

15                  The Court has considered the submissions upon which the IIA would rely if leave were granted. It has also considered the closing submissions of iiNet.

16                  The Court is satisfied that the limited intervention sought would not unreasonably interfere with the conduct of the hearing given that no further oral or written submissions are sought to be advanced (O 6 r 17(2)(b)) and that there are no other relevant matters for determination (O 6 r 17(2)(c)). Therefore, the critical question for the Court’s consideration is whether the IIA’s contribution would be ‘useful and different’ to the contribution being made by the parties (O 6 r 17(2)(a)).

17                  In Australian Securities & Investments Commission v Citigroup Global Markets Australia Pty Ltd (No. 3) [2007] FCA 393, Jacobson J found that he was not satisfied that the contribution of a group which he described as a ‘lobby group’, namely the Australian Financial Markets Association (‘AFMA’), would contribute to the proceedings in a way which was ‘useful or different from the contributions of the parties’ (see [12]). His Honour observed that the parties were well represented by substantial teams of legal counsel. He also observed at [13] that the applicant in those proceedings, ASIC, would not ‘be influenced by tactical or forensic considerations which would be necessary to be off-set by submissions made by AFMA’.

18                  The submissions sought to be relied upon by the IIA regurgitate in substance the submissions provided by iiNet which deal, in significant detail, with the subject matters concerning the safe harbour provisions; s 112E of the Copyright Act; and the concept of copyright authorisation considered in the context of the AFACT notices. The submissions of iiNet have also dealt with the practical and cost consequences of an ISP being required to comply with the demands of the AFACT notices. Further, the provisions of the Telecommunications Act 1997 (Cth) and their interaction with the Copyright Act have also been the subject of extensive submissions from iiNet. Indeed, the industry, detail and comprehensiveness of iiNet’s closing submissions, stretching for more than 260 pages, eclipse the brief submissions of the IIA even on the specific matters with which the IIA wishes to address the Court.

19                  The Court acknowledges that the fact that the IIA could not be considered impartial is irrelevant. Equally, it is irrelevant that the IIA happens to have a perspective which is aligned with one of the parties and not the other. As much is clear from the High Court allowing Telstra and the Australian Digital Alliance to act as amicus in IceTV. Therefore, the only relevant consideration is whether the IIA’s submissions are ‘useful and different’ from that which the Court already has before it.

20                  Had there been a subject matter contained in the submissions of the IIA which had not been the subject of submissions from iiNet, the Court would have adopted the approach taken by Kirby P in Breen. However, the Court is satisfied that the matters sought to be advanced before this Court by the IIA do not add any material to that which has already been provided to the Court. That is, there is no subject matter of the proposed submissions which has been omitted by iiNet, nor which could be usefully supplemented by the matters contained in those proposed submissions.

21                  The Court has been fully assisted by both iiNet and by the applicants in respect of the issues which are the subject of the IIA’s proposed submissions. The mere fact that the IIA is not iiNet and thus claims to bring a ‘broader perspective’ does not render its submissions ‘different and useful’. Much of the IIA’s submissions in favour of its intervention appear to relate to its involvement in the process of the creation of legislation that is at issue before this Court. However, that involvement is only relevant to the extent that it means that the IIA can provide actual insight as to the interpretation of legislation which iiNet cannot. It does not grant the IIA some kind of preferred status as interpreter of the legislature’s will. As the applicants have rightly submitted, it does not matter who says something, it matters what is said and, as has already been stated, the IIA has not proffered anything materially different to iiNet.

22                  If the IIA intended by its application for intervention to bring to the Court’s attention the importance of its decision in these proceedings, it can take such fact as noted. The Court is, and always has been, well aware of the ramifications of the outcome of its decision for ISPs, rights holders, and the development of the internet more broadly.

23                  The Court refuses leave for the IIA to participate in the hearing by the making of oral and written submissions.

Associate:

Dated:         26 November 2009

SCHEDULE 1 - APPLICANTS

UNIVERSAL CITY STUDIOS LLLP
Second Applicant

PARAMOUNT PICTURES CORPORATION
Third Applicant

WARNER BROS. ENTERTAINMENT INC.
Fourth Applicant

DISNEY ENTERPRISES, INC.
Fifth Applicant

COLUMBIA PICTURES INDUSTRIES, INC
Sixth Applicant

TWENTIETH CENTURY FOX FILM CORPORATION
Seventh Applicant

PARAMOUNT HOME ENTERTAINMENT (AUSTRALASIA) PTY LTD
Eighth Applicant

BUENA VISTA HOME ENTERTAINMENT, INC
Ninth Applicant

TWENTIETH CENTURY FOX FILM CORPORATION (AUSTRALIA) PTY LTD
Tenth Applicant

UNIVERSAL PICTURES (AUSTRALIA) PTY LTD
Eleventh Applicant

VILLAGE ROADSHOW FILMS (BVI) LTD
Twelfth Applicant

UNIVERSAL PICTURES INTERNATIONAL B.V
Thirteenth Applicant

UNIVERSAL CITY STUDIOS PRODUCTIONS LLLP
Fourteenth Applicant

RINGERIKE GMBH & CO KG
Fifteenth Applicant

INTERNATIONALE FILMPRODUKTION BLACKBIRD VIERTE GMBH & CO KG
Sixteenth Applicant

MDBF ZWEITE FILMGESELLSCHAFT MBH & CO KG
Seventeenth Applicant

INTERNATIONALE FILM PRODUCKTION RICHTER GMBH & CO KG
Eighteenth Applicant

NBC STUDIOS, INC
Nineteenth Applicant

DREAMWORKS FILMS L.L.C
Twentieth Applicant

WARNER BROS INTERNATIONAL TELEVISION DISTRIBUTION INC
Twenty-First Applicant

TWENTIETH CENTURY FOX HOME ENTERTAINMENT INTERNATIONAL CORPORATION
Twenty-Second Applicant

WARNER HOME VIDEO PTY LTD
Twenty-Third Applicant

PATALEX III PRODUCTIONS
Twenty-Fourth Applicant

LONELY FILM PRODUCTIONS GMBH & CO KG
Twenty-Fifth Applicant

SONY PICTURES ANIMATION INC
Twenty-Sixth Applicant

UNIVERSAL STUDIOS B.V.
Twenty-Seventh Applicant

SONY PICTURES HOME ENTERTAINMENT PTY LTD
Twenty-Eighth Applicant

GH ONE LLC
Twenty-Ninth Applicant

GH THREE LLC
Thirtieth Applicant

BEVERLY BLVD LLC
Thirty-First Applicant

WARNER BROS ENTERTAINMENT AUSTRALIA PTY LTD
Thirty-Second Applicant

TWENTIETH CENTURY FOX HOME ENTERTAINMENT LLC
Thirty-Third Applicant

SEVEN NETWORK (OPERATIONS) LTD
Thirty-Fourth Applicant